Sweet respite for Cadbury as the High Court partially upholds its appeal

By GuestKats Becky Knott and Jan Jacobi.

    This Kat getting up close and personal to the colour purple         

The saga of Cadbury v Nestlé has been one of the highest profile, longest-running disputes in the trade mark world. The colour purple has been central to this, with Cadbury suffering a number of defeats in the courts. See previous Katposts here, here, and here for a refresher.

 

However, last week it would appear that the tide of Cadbury’s fortunes has turned. 

 

This is because the High Court of England and Wales delivered its judgment in Société des Produits Nestlé S.A. v Cadbury UK Limited [2022] EWHC 1671 (Ch). In it, Meade J ruled in favour of Cadbury, partially upholding its appeal and overturning the Hearing Officer’s previous decision. Fans of chocolate, read on for a mouth-watering decision.

 

Background

 

Article 3 of Directive (EU) 2015/2436 provides that colours can be registered as trade marks. Registering a colour mark is no small feat and requires several hurdles to be taken before the mark is registered successfully. One of these hurdles is that the subject of the registration, in this case a colour, must constitute a ‘sign’. In the Libertel case, the Court of Justice of the European Union (CJEU) ruled that:

 

“In that regard it must be pointed out that a colour per se cannot be presumed to constitute a sign. Normally a colour is a simple property of things. Yet it may constitute a sign. That depends on the context in which the colour is used. None the less, a colour per se is capable, in relation to a product or service, of constituting a sign.” (paragraph 27).

 

The apparent contradiction of this ruling has led to confusion and different interpretations. On the one hand, the CJEU seems to suggest that in principle colours can be signs. On the other, the CJEU also indicates that a colour cannot be a sign by default, and that only with a certain context of use a colour can become a sign. Unfortunately, in the decisions following the Libertel case, the CJEU has been silent on how and by whom this context of use should be established.

 

The difference in interpretation can have significant consequences in determining whether a colour constitutes a sign. In the first interpretation, a single colour without any description or indication of the context of use could still be a sign. In the second, this would not be possible, as the potential for becoming a sign would depend on the specific context in which the colour would be used.

Cadbury faced this issue regarding its purple colour mark with the description “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”. In the decision by the Court of Appeal of England and Wales in 2013, it was held that due to the word ‘predominant’, the mark could not be a singular sign, but rather would grant a right to multiple signs, which could take different forms and appearances. This in turn would prevent legal certainty and lead to an unfair competitive advantage. 

 

Facts of the case

 

After its defeat, Cadbury attempted to register three new colour marks, each with a different description: 
 

 

 

1.    UK Application No. 3019362  (see here) and referred to as ‘362’.

 

Mark description: “The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.”

 

2.    UK Application No. 3019361  (see here) and referred to as ‘361’.

 

Mark description: “The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.”

 

 

3.    UK Application No. 3025822   (see here) and referred to as ‘822’.

 

Mark description: “The colour purple (Pantone 2685C), shown on the form of application.”

 

Nestlé opposed all three applications, arguing that the marks could not constitute signs. The Hearing Officer dismissed the opposition against the first mark (362) and upheld the opposition against the other two (361 and 822), leading Cadbury to appeal before the Court (Chancery Division). 

 

The Appeal

 

Meade J narrowed down the issues to two questions. The first was whether the change in the description in mark 361, which no longer mentioned that the colour would be ‘predominantly’ applied to the surface of the goods, would solve the issue of the mark not being a sign. 

Meade J answered this question in the negative. With its new description, the potential ways to apply the colour to the packaging of the goods were (still) unlimited, and could include the whole surface, or the predominant part, or any other way. As such, Meade J found the new description to be worse than the description at issue in the 2013 judgment, considering that the removal of the wording is “cosmetic at best and does not help. It preserves all the practical problems of scope and adds more” [paragraph 36]. Meade J therefore agreed with the Hearing Officer that the opposition against this mark should be upheld.

The second question concerned mark 822. Could this mark, which had no description on the context of use, nonetheless constitute a sign? This question touches on the above-mentioned uncertainty that the Libertel case presents.

 

The Hearing Officer decided that mark 822 should suffer the same fate as mark 361 and explained that “this is because as it stands the representation does not explain how the colour is used as a sign at all, whether it be on the packaging, advertising materials or applied to the goods themselves”. Moreover, there could be two fundamentally different signs, namely a sign comprising of purple chocolate (i.e. the good is purple) or purple packaging for chocolate (i.e. the packaging is purple). 

 

Meade J approached the matter differently. Summarizing his view in 6 principal reasons, Meade J effectively accepted that the Libertel judgment allows single colours without a context of use:

 

 

“i)             With a Libertel form mark the sign is the colour per se, no more and no less.  This is a single thing, conceptually.

 

ii)           Thus use of the colour is use of the same sign when used on packaging, on business documents, on advertising or indeed on the goods themselves.  There is not a different sign merely because use takes place in a different context.

 

iii)         Ambiguity/multitude of forms is let in by wording like “predominant” but it is not let in by a sign which is a single colour per se.

 

iv)         The Hearing Officer’s decision effectively would mean that a colour per se mark could only validly be a sign if accompanied by a limitation to a single manner of use such as “the whole surface of the packaging”.  That is inconsistent with the CJEU’s case law that a colour per se “without contours” can validly be a sign, as was repeated in [48] of the decision.  The Comptroller’s written submissions explicitly accepted that Libertel form marks are permissible “in the right circumstances”, but if Cadbury’s circumstances are not right, I do not see how any other applicant would do better.

 

v)           On that basis, I accept Mr Purvis’ submission that the Hearing Officer’s reasoning was inconsistent as between ‘362 and ‘822 (at [48] as contrasted with [54]).

 

vi)         More generally, the Decision would have the effect that no, or almost no, Libertel form mark would ever be valid.  Although the ratio of the Court of Appeal in CoA 2013 did not strictly extend to Libertel form marks, in my view the Court had them well in mind, and against a backdrop of considered reasoning the judgments clearly imply that they could potentially comply with the requirements for a sign.”

 

Meade J therefore upheld the appeal to the opposition on mark 822. 

As a closing comment, Meade J explained that the principal difference in the two marks was that 361, due to its description, left it unclear as to whether a combination of colours would be in the scope of the right applied for. Mark 822 did not suffer from this problem because it conceptually represented one single thing: the colour purple. Furthermore, Meade J also remarked that it should be possible to have a colour mark which specifies unambiguously and in appropriate detail how a colour is applied to goods. 

 

Comment

 

The decision will surely spark further debate on colour marks. To these GuestKats, the arguments of the decision are not fully convincing. 

The difference between mark 361 and mark 362 is that the latter provided certainty regarding the context in which the colour would be used: regardless of the packaging or its materials, the purple colour would always be applied on its visible surface. By providing this context, the sign itself was defined. This allows for legal certainty. Anyone consulting the trade mark register could deduce that Cadbury reserved the right to use this specific purple colour for the whole visible surface of the packaging. 

Mark 362 did not define a sign, but instead reserved a potential for a plurality of signs, depending on how the colour would be applied to the packaging of the good, which might be the whole surface/only a proportion thereof/in combination with another colour etc. 

Like the Hearing Officer, these GuestKats have difficulty understanding how a mark that has no description at all (i.e. mark 822) would remove these problems. If anything, such a mark would allow an even wider scope and a potentially unlimited number of very different signs; the colour could be applied to the packaging (in all conceivable forms and in combination with other colours), the good itself, or even services to promote the good. Neither the trade mark office nor competitors would be able to deduce how the colour would be used from the trade mark register. 

 

The consequence of this decision, namely that colour marks that do provide for a context of use (thus aiming to add more clarity) are more susceptible to invalidity/opposition, seems difficult to justify. At the same time, as Meade J also noted, the conclusion that colour marks without a description can never be valid may also be too rigid and an interpretation unintended by the CJEU. 
 

Picture on top middle is by Becky Knott.

 

Images of the marks are in the public domain.