Court of Appeal end purple reign: Christmas comes early for Nestlé as Cadbury told it is not entitled to exclusive rights
As with the earlier High Court case, reported by the poster here, legal arguments were squarely focussed on the written description of the mark i.e. "The colour purple (Pantone 2685C) applied to the whole visible surface, or being the predominant colour applied to the whole visible surface of the packaging of the goods".
Nestlé argued that the emboldened wording meant Cadbury's application was not for a single sign but, in fact, covered a number of signs and therefore a number of fluid, visual forms that could not be "represented graphically". As such, the application was not a sign that could be represented graphically and could not satisfy the requirements of precision, clarity and objectivity.
Nestlé also relied on the recent judgement of Judge Arnold in the Zynga case (concerning the Scrabble Tile) which made clear that an assessment of whether a sign served to identify the goods or services of the Applicant as a result of substantial use was only relevant when it had first been established that the subject of the application was indeed a sign that could be represented graphically.
In concluding that Cadbury's application was not, in fact, a sign that could be represented graphically, the panel of three judges took a different view to the judge at first instance, who had shared the UK- IPO Hearing Officer's opinion that the written description was not strictly necessary but did, in fact, help increase legal certainty in the event of infringement proceedings.
The Court of Appeal believed to the contrary the application was not for a colour mark per se but for a "shade of colour 'plus' other material" and to allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. Furthermore, the Court felt such a registration would give a competitive advantage to Cadbury that went beyond the protection provided by a trade mark registration.
This decision will be welcome relief to Nestlé, who sell “The Big Purple One” (an oversized version of the Quality Street favourite in the purple wrapper) as well as other third parties. It was widely reported in the run up to Christmas last year that The Meaningful Chocolate Company had withdrawn their "advent purple" chocolate range after taking legal advice.
Cadbury, who could ask for leave to appeal to the Supreme Court, will now have to assert its common law right to the colour purple in a passing off action if it wants to prevent third parties using "advent purple" - and rely on the longstanding use that ultimately proved ineffective in securing a monopoly right.