England: Ashfords Brand Bulletin - CADBURY'S REGISTER THE COLOUR PURPLE AS A TRADE MARK
Readers may recall that last December we reported on the fact that Cadbury had succeeded in registering as a UK trade mark a particular shade of purple, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of certain goods. These were 'chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate.'
Yesterday, his Honour Judge Birss QC, sitting in the High Court, dismissed the majority of Nestle's appeal against the earlier decision.
The key points to come out of his judgment are:
Pure colours per se can be registered as trade marks for goods and/or services;
The words used by Cadbury to describe their mark, namely "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' were acceptable and resulted in a sign that is sufficiently clear and precise and capable of registration; and
- The evidence showed that the public associated the colour purple in question with Cadbury's milk chocolate in bar and tablet form, but not other forms of chocolate (e.g. plain, dark or white chocolate). As a result, the specification of goods should be amended to refer to 'milk chocolate in bar and tablet form' and 'milk chocolate for eating', but not the word 'chocolate' per se.
Overall, it was a win for Cadbury and reaffirmed practitioners' views that, in the right case, it is possible to register colours per se as trade marks - the result being that, provided Cadbury continue to use the colour in trade and to pay the renewal fees, it has a perpetual monopoly over the right to use the colour in question in connection with the goods for which it is registered. It can also prevent other traders from using identical/similar colours in connection with similar/identical goods if there is a likelihood of confusion (i.e. of persons thinking the goods come from Cadbury, or an economically-linked undertaking).
If you wish to discuss this email, or any other brand or trade mark issue, please contact Carl Steele, Head of Trade Marks, or feel free to contact any of Ashfords' IP Partners - firstname.lastname@example.org
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