Whole visible surface or predominant colour? Cadbury's plays spot the series mark

The mark (AKA Pantone 2685C)

Cadbury UK Ltd v The Comptroller General of Patents Designs And Trade Marks [2018] EWCA Civ 2715.

This appeal concerned Cadbury's attempt to amend the description of the mark:

The mark consists of the colour purple, as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods. The mark consists of the colour purple (Pantone 2685C) as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.

The Comptroller and John Baldwin QC (sitting as a deputy judge in the appeal to the High Court) both denied the request to amend the description.

Frustratingly for Cadbury's the issue arises because Cadbury's followed guidance from the registrar in 1997 and amended their 1995 mark from a description which read "the mark consists of the colour purple" to the above longer form and more confusing wording. This change was made at the express suggestion of the registrar (Cadbury's application had been to amend the description to "the mark consists of the colour purple as shown applied to the packaging or labelling of goods covered by the registration".

The reason for this application to change the mark was the impact of the decision in Société des Produits Nestlé SA v Cadbury UK Limited [2013] EWCA Civ 1174 ("Cadbury 1") - see the IPKat post here. This case considered whether the description together with the mark defined a sign within the meaning of section 1(1) TMA (it did not). As a result of the Court of Appeal decision, Cadbury's had to revisit its earlier 1995 mark which had the same description and consequently was vulnerable to an invalidity attack. A small ray of hope was glimpsed in the Court of Appeal's analysis and it concluded that it might be possible to remove the "predominant colour" wording from the description, and leave only the "whole surface" wording. If this had been possible, it might have been possible to overcome the Cadbury 1 objection.

There were three grounds of appeal:

1. The deputy judge wrongly failed to construe the 876 mark as consisting of two descriptions of the mark presented as alternatives: namely (i) the purple colour applied to the whole visible surface of the packaging and (ii) the purple colour being the predominant colour applied to the whole visible surface of the packaging 
2. The deputy judge wrongly considered that the fact that the second alternative covered an unknown number of ways of presenting the colour meant that it failed to satisfy section 41(2) of the Act [i.e. it did not qualify as a series mark]. That was a different question from whether it satisfied section 1(1) of the Act.
3. Even if it is correct that the 876 mark is wrongly registered as a series, the deputy judge was wrong to consider that this prohibited Cadbury from deleting the second alternative under rule 28(5) of the 2008 rules. Rule 28(5) permits the proprietor to delete any mark which appears on the register as part of a series regardless of whether it qualified to have been registered as a series.

The series argument was an interesting angle but [spoiler alert] it was not successful. Floyd LJ took the lead on this one. 

Interesting points to note:

1. Although Cadbury's application was not explicitly for a series mark, Floyd LJ did not consider this determinative as the registrar has a power to register a series of marks in accordance with the Act and rules. "If a fair reading of the register is that he has exercised that power, I would be reluctant to hold that the absence from Form TM3 of a statement of the number of marks in the series would be determinative of whether a series had in fact been registered." 
2. The question was whether the mark was (i) a single mark with an imprecise description, or (ii) two or more marks forming a series. (Put another way, was it a valid mark bundled with an invalid mark or one mark with a flawed description?) This was important as if the mark was part of a series, it could have been possible to delete the invalid mark.  
3. The debate essentially was a question of whether (i) the opening description of the mark ("The mark [singular] consists of the colour purple…") was determinative or (ii) the two alternatives (whole surface or predominant colour) in the second part of the description lead to the conclusion that more than one mark has been registered.
4. The use of the word "or" was not enough to dissuade Floyd LJ from the conclusion that the description referred to a range: "Taking both parts of the description and reading the description as a whole, what is being described is every conceivable case where purple is the predominant colour, including, for the avoidance of doubt, the case where no other colour is visible." As Floyd LJ noted, "the logical result of Cadbury's argument is... that the registrar has allowed registration not of a series consisting of two marks but a series consisting of an unknown number of marks." The simpler and more obvious conclusion was that the description "were parts of a generalised but imprecise description of a single mark".

The final word

Floyd LJ had the final word: "Whilst one can feel sympathy for Cadbury that it is its adherence to the Guidance which has given rise to the breach of these requirements, it would be a potentially far-reaching step to allow the consequent lack of clarity to be read, instead, as an attempt to register a number of marks. I agree with the registrar that such an approach to interpretation would give rise to grave difficulties for the examination of trade marks. It must be for the applicant to state clearly the type of monopoly for which he contends."

This case could raise questions over adherence to future guidance from the registrar. As always, readers' constructive comments and insights on this and the other issues raised by the case are appreciated.

This was an interesting and novel argument which has provided some clarity around both series marks and the description of colour marks. What next in the chocolate wars? Watch this space.