The Court of Appeal’s decision, to dismiss Cadbury’s attempt to alter its trademark registration for the color purple, highlights how an ever-evolving trademark law can leave older non-traditional trademarks vulnerable to cancellation.

Registering a non-traditional trademark, such as sound clip, position mark, or a color, can offer a significant competitive advantage in a world where goods and services are marketed in a wide variety of different ways. Cadbury was but the latest household name to return to the courts in order to seek or maintain protection. In June 2018, the Court of Justice of the European Union (CJEU) made a landmark decision concerning Christian Louboutin’s trademark for its iconic red-soled shoes, indicating that the specific color red could be monopolised by the fashion designer. However, Red Bull lost its EU Trademark registrations for its blue and silver color combinations for lack of being sufficiently precise, in November 2017, in proceedings before the EU General Court.

Cadbury’s Case

In Cadbury’s latest proceedings, the confectioner sought to amend its existing trademark registration for the color purple (Pantone 2685C), which dates back to 1995. This was registered for its iconic chocolate bars and the description of the mark indicated that it “applied to the whole visible surface, or being the predominant color applied to the whole visible surface, of the packaging of the goods”.

The requested amendment was a defensive strategy and an attempt to secure the mark’s validity in the light of a successful opposition by Nestlé to another of its registrations for the purple color. In the 2013 Court of Appeal decision, Cadbury’s application, which had the same description, was refused on the basis that the description could indicate that the mark included an unknown number of signs.

Noting that this reasoning could apply to its existing registration, Cadbury initiated an action with the UKIPO to amend the description, to drop the latter phrasing “being the predominant color applied to the whole visible surface”.

Following submissions by rival Nestlé, the Court of Appeal rejected Cadbury’s request, with Lord Justice Floyd saying: “…the informed reader of the registration would, I have no doubt, conclude that the various alternatives covered by the description were not intended to identify separate marks, but were parts of a generalised but imprecise description of a single mark… It must be for the applicant to state clearly the type of monopoly for which he contends.”

Take-Aways

When applying to register unusual marks, such as the color purple in Cadbury’s case, the description provided at the time of filing the application is of key significance and forms as much a part of the mark as the mark itself. It is, therefore, vital that the wording in the description is clear and precise so that anyone viewing the register can see what the mark is and what it protects.

Following the Court of Appeal’s decision, there is a risk that Cadbury’s purple trademark will be considered invalid, as the description could indicate that more than one sign is covered by the mark, rendering the registration imprecise. The correct way to cover more than one sign would have been to apply for separate marks or a series mark at the outset. Cadbury tried to do so retrospectively, and this was not allowed.

Competitors such as Nestlé may now be considering their options in terms of seeking to cancel Cadbury’s registration altogether. This will likely make it harder for Cadbury to stop others from using the color purple for chocolate, and claiming a monopoly on the particular shade, but provided they have acquired the necessary goodwill in the UK, there could be an argument under the law of “passing off”.

As well as ensuring that applications for non-traditional marks are sufficiently precise and clear, the decision is also a reminder to practitioners that altering a trademark registration is subject to very limited exceptions, namely exceptions that do not substantially affect the identity of the trademark.

Trademark law is constantly evolving, and owners of long-standing non-traditional marks should now review their portfolios to ensure that older registrations remain valid (and re-file if necessary). It is also worth keeping in mind what other rights might be used to protect a product, such as design rights or copyright, which are sometimes better placed to deal with a particular issue.

As for Cadbury, the decision is a blow in its ongoing battle with Nestlé, its oldest UK color registration now being vulnerable to fade away.

Image Source: @CadburyUK Twitter.