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This article was included in the winter 2011/12 issue of snIPpets - the intellectual property newsletter.
A recent decision of the Intellectual Property Office of the United Kingdom (UK-IPO) has allowed Cadbury Limited to obtain registration of a shade of purple for various types of chocolate. The decision indicates a willingness by the UK-IPO to accept colour marks, but only on the basis of acquired distinctiveness and only for the exact goods for which the mark has become known.
Background
In 2004, Cadbury applied to register a particular shade of purple as a trade mark for "chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes". The application was accompanied by a written statement which describes the mark as "the colour purple (Pantone 2685C), as shown on the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods".
The UK-IPO refused registration on the basis that the mark lacks distinctive character. Cadbury was able to overcome this refusal by filing evidence demonstrating that the mark has acquired distinctiveness through use. The application was accepted and published for opposition purposes in 2008.
Societe Des Produits Nestle SA opposed the application on the following grounds:
- the mark is not a sign, is not capable of being represented graphically and is incapable of distinguishing the goods of one undertaking from those of others;
- the mark lacks inherent distinctiveness and has not acquired distinctive character;
- the application was made in bad faith because Cadbury had no intention of using the mark for " the whole visible surface...of the packaging of the goods".
The Mark is not a Sign
The Hearing Officer held that, because purple is not merely a property of chocolate, the mark is a sign. It is also capable of being represented graphically – this requirement being satisfied by the sample of the colour and the Pantone reference which accompanied the application.
Nestle's argument that the mark is incapable of distinguishing was contingent on the distinctiveness grounds. If the mark was held to be inherently or factually distinctive, the "incapable of distinguishing" argument would be rejected.
Inherent Distinctiveness
Cadbury accepted that the mark lacks inherent distinctiveness and is prima facie unregistrable. However, it argued that through extensive use, the mark has become factually distinctive. The Hearing Officer's assessment thus turned on the evidence; it had to decide whether the mark has become factually distinctive and, if so - bearing in mind the public interest in not restricting the availability of colours for others - for which particular goods.
The Hearing Officer accepted that the mark had acquired distinctiveness in relation to chocolate in bar and tablet form and drinking chocolate. The mark had been used for chocolate in bar and tablet form, in the particular shade applied for, for over twenty years. In respect of drinking chocolate, a licensee of Cadbury had been selling this product in purple packaging since the early 1990s and by 2007, Cadbury had a 55% market share for drinking chocolate. Nestle filed evidence that other parties used purple on the packaging of chocolate bars and drinking chocolate but the Hearing Officer held that this did not detract from the factual distinctiveness of Cadbury's mark.
Cadbury's application covered other goods - chocolate assortments, chocolate confectionery at large and chocolate cakes - but there was insufficient evidence to show that the mark had become factually distinctive of those products.
Bad Faith
Nestle argued that the appearance of brand names, such as TWIRL, on a wrapper meant that the whole visible surface of the packaging was not entirely purple and that, accordingly, the application was made in bad faith. The Hearings Officer rejected this argument on two counts. First, the description "applied to the whole visible surface...of the packaging of the goods" cannot reasonably be interpreted as excluding the use of different coloured brand names on Cadbury's packaging. Second, to suggest that Cadbury's description falls short of the standards of acceptable commercial behaviour - the measure of bad faith adopted by the English courts - is far-fetched, even if it is unlikely to use entirely purple packaging.
Outcome
On the basis of his findings, the Hearing Officer allowed registration for chocolate in bar and tablet form, eating chocolate, drinking chocolate and preparations for making drinking chocolate.
In practice
The decision shows that colours can be registered as trade marks, provided there is weighty evidence that the mark is recognised as indicating a particular trader's goods. The scope of the registration will also be determined by the evidence; registration will only be obtained for the goods in relation to which the mark is shown to be distinctive.
However, there remain question marks over what will amount to an infringement of Cadbury's registration. Given the public interest in not restricting the availability of colours for other traders, it will be interesting to see what types of marks will be deemed too close to Cadbury's purple for infringement purposes.
Richard Hing, Solicitor (New Zealand Qualified), IP Protection and IP Enforcement and Litigation at Fieldfisher.