Cadbury UK Ltd (Cadbury) has suffered a further setback at the hands of the High Court in its ongoing efforts to protect the colour purple as a trade mark in the United Kingdom.
Storm Clouds on the Horizon – Court of Appeal Decision
Back in 2013, a United Kingdom trade mark application by Cadbury for the colour purple was successfully opposed by Nestle on the rather technical grounds that the written description of the mark did not satisfy the requirements of section 3(1)(a) of the Trade Marks Act 1994 ("the Act") that the mark be "a sign". This was because the written 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") indicated not just the colour purple, but also other signs in which the colour purple predominates. The Court of Appeal considered that the written description therefore comprised "an unknown number of signs". The unknown number of signs meant that the requirement for the mark to be "a sign" was not met.
It Never Rains it Pours – IPO Decision in Current Case
The rejected application was not Cadbury's only protection for the colour purple in the United Kingdom. Cadbury already had an existing registration dating back to 1995. However, this registration contained the same written description. Sensing the danger this registration may be declared invalid following the Court of Appeal decision, Cadbury sought to amend the registration by deleting the second part of the written description. In doing so, Cadbury interpreted the description as indicating two marks within a series, one being the colour purple as applied to the whole visible surface of the packaging, and the second in which purple was the predominant colour applied to the whole visible surface of the packaging. Cadbury then attempted to delete the second 'mark' in the purported series (in accordance with s 41 of the Act and Rule 28 of the Trade Mark Rules 2008) in a bid to stave off a potential invalidity claim.
Cadbury's attempts were given short shrift by the Hearing Officer at the United Kingdom Intellectual Property Office, who refused this creative argument on the basis that (1) Cadbury had not applied for a series mark at the time of registration, so the mark could not now be treated as such, (2) there was no mark to be deleted because the words in the registration did not describe a mark (as per the Court of Appeal's reasoning in the earlier opposition) and finally, (3) any deletion would amount to alteration of the trade mark by another name – which is prohibited under section 44 of the Act.
The Deluge – High Court Decision
Cadbury appealed the Hearing officer's decision to the High Court and that appeal has now been dismissed.
In the High Court, Mr John Baldwin QC (sitting as a judge of the Chancery Division) agreed with the Hearing Officer, holding that the registration was not for a series, but rather comprised a single mark with a description that encompassed a large but unknown number of signs with only one characteristic in common – that purple was the predominant colour applied to the whole visible surface of the packaging. Mr Baldwin went on to note that this common characteristic was insufficient to satisfy the requirement in section 41 of the Act that the members of a series must differ only as to matters of a non-distinctive character. He considered that while purple might be the predominant colour, yellow or green spots might fall within the description as well and these may contribute to the sign's distinctive character. Because the registration was not for a series, Cadbury's attempts to delete the second 'mark' in the purported series were doomed to failure.
Cadbury's arguments appeared tenuous at best and the decision looks to be the correct one. However, it is notable that the written description at issue was suggested by the Registry itself during the application process – Cadbury had initially filed the application with the description "the mark consist of the colour purple" and resisted the Registry's requests to amend it. This should serve as a reminder that complying with dubious Registry requests in order to achieve a registration can have dire consequences down the line, even as much as twenty years later.
It is also interesting that, although saying of the Hearing Officer "I do not think he can be criticised", Mr Baldwin did not appear to place the same reliance as the Hearing Officer on the fact the application had not been filed as a series. This opens up the possibility that, had the written description been accepted as describing a series, Cadbury's arguments may have been accepted notwithstanding that the application had not in fact been filed as a series.
Cadbury may still appeal the High Court decision so watch this space for further updates.