Further to our previous post on this matter, the Supreme Court has now refused Cadbury's permission to appeal the decision of the Court of Appeal rejecting its trade mark application for "The colour
Further to our previous post on this matter, the Supreme Court has now refused Cadbury's permission to appeal the decision of the Court of Appeal rejecting its trade mark application for "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". The goods being "Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate".
Cadbury had submitted that the matter should be referred to the European Court of Justice (ECJ) but the Supreme Court reasoned that it was not necessary to request the ECJ to give a ruling because the question was irrelevant as the court’s existing jurisprudence already provided a sufficient answer.
This was always the likely outcome after the Court of Appeal looked past Cadbury's long-standing association with the colour purple (so persuasive in earlier proceedings) and focused on whether the subject of the application actually constituted a sign capable of trade mark protection.
The findings of the ECJ in Ralf Sieckmann v Deutsches Patent- und Markenamt back in 2002 introduced criteria that has become the legal standard for trade mark applications. The seven "Sieckmann principles" state that a representation of a sign must be clear (not ambiguous), precise, self-contained, easily accessible, intelligible, durable, and objective.
The inclusion of the word "predominant" in Cadbury's description of the sign meant the trade mark application failed to meet the above criteria. The description of the sign meant that Cadbury was, in effect, seeking a monopoly for numerous signs with various and ever changing visual forms that could not be identified by competitors, such as Nestlé, inspecting the Register.
Having failed to meet the legal standard established by the "Sieckmann principles", the Supreme Court was satisfied that Nestlé's opposition should be successful and Cadbury's application should be rejected.
It would be premature to conclude that the war is over but, for now, Nestlé appears to have achieved its aim of preventing Cadbury from obtaining a registration that, technically, could have been used to prevent further sales of “The Big Purple One”, an oversized version of the Quality Street favourite in the purple wrapper sold by Nestlé.
Cadbury has hinted that it will file a new application without the now infamous wording "…or being the predominant colour applied to the whole visible surface…" but, like the child who has gorged himself on his chocolate eggs, it may regret being too greedy this Easter.
Cadbury had submitted that the matter should be referred to the European Court of Justice (ECJ) but the Supreme Court reasoned that it was not necessary to request the ECJ to give a ruling because the question was irrelevant as the court’s existing jurisprudence already provided a sufficient answer.
This was always the likely outcome after the Court of Appeal looked past Cadbury's long-standing association with the colour purple (so persuasive in earlier proceedings) and focused on whether the subject of the application actually constituted a sign capable of trade mark protection.
The findings of the ECJ in Ralf Sieckmann v Deutsches Patent- und Markenamt back in 2002 introduced criteria that has become the legal standard for trade mark applications. The seven "Sieckmann principles" state that a representation of a sign must be clear (not ambiguous), precise, self-contained, easily accessible, intelligible, durable, and objective.
The inclusion of the word "predominant" in Cadbury's description of the sign meant the trade mark application failed to meet the above criteria. The description of the sign meant that Cadbury was, in effect, seeking a monopoly for numerous signs with various and ever changing visual forms that could not be identified by competitors, such as Nestlé, inspecting the Register.
Having failed to meet the legal standard established by the "Sieckmann principles", the Supreme Court was satisfied that Nestlé's opposition should be successful and Cadbury's application should be rejected.
It would be premature to conclude that the war is over but, for now, Nestlé appears to have achieved its aim of preventing Cadbury from obtaining a registration that, technically, could have been used to prevent further sales of “The Big Purple One”, an oversized version of the Quality Street favourite in the purple wrapper sold by Nestlé.
Cadbury has hinted that it will file a new application without the now infamous wording "…or being the predominant colour applied to the whole visible surface…" but, like the child who has gorged himself on his chocolate eggs, it may regret being too greedy this Easter.