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High Court clarifies position on the registrability of colour “per se” trade marks
Home / News & Articles / High Court clarifies position on the registrability of colour “per se” trade marks
Author: Lindsey Rigg
In 1920, Cadbury launched their purple and gold packaging for their Dairy Milk range, rumoured to have been chosen as a tribute to Queen Victoria. Since then, Cadbury have used their iconic shade of purple on a range of confectionary. However, the efforts of Cadbury to protect their brand’s shade of purple, known as “Pantone 2865c” (the “Cadbury Purple”), as a trade mark has proven to be a contentious and difficult journey. This article covers the latest High Court decision in this ongoing saga.
In 2019, the UK Intellectual Property Officer issued their decision (O/198/19) in relation to an opposition Nestlé brought against the following three Cadbury trade mark applications. The applications had the same coloured square depicted and identical goods in class 30, but slightly different descriptions:
Application No. 3 019 362 was for the Cadbury Purple “applied to the whole visible surface of the packaging of the goods” (Mark 362);
ApplicationNo 3 019 361 was for the Cadbury Purple “applied to the packaging goods” (Mark 361); and
ApplicationNo 3 025 822 was for the Cadbury Purple, but with no reference to the packaging of goods at all (Mark 822).
The Hearing Officer rejected the opposition in relation to Mark 362, but upheld it against Mark 361 and Mark 822.
Cadbury sought to appeal the Hearing Officer’s decision in relation Mark 361 and Mark 822 to the High Court. At this point, Nestlé and Cadbury had settled their long-running dispute, therefore Nestlé did not take part in the appeal. Instead the Comptroller-General of Patents, Designs and Trade Marks intervened to assist the Court.
On 5 July 2022, Mr Justice Meade handed down his decision in the High Court where he allowed the appeal in relation to Mark 822, but not for Mark 361.
Nestlé opposed the applications under Section 3(1)(a) and 3(1)(b) of the Trade Marks Act 1994. These absolute grounds for refusal of a trade mark registration include:
signs which do not satisfy the requirement of section 1(1), which requires that the sign is capable:
of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.
trade marks which are devoid of any distinctive character.
However, only section 3(1)(a) was applied and tested in the Hearing Officer’s decision and the High Court appeal.
In considering the state of the law, the Hearing Officer and Meade J considered the following case law:
This case covered whether Libertel could register the colour orange, without reference to any colour code.
In the judgment, the CJEU decided that a colour per se could have distinctive character if it had a graphical representation, noting that:
“a colour per se, not spatially delimited, may … have a distinctive character … provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”
The judgment went on to confirm that a colour may be graphically represented by designating that colour using an internationally recognised identification code.
As a result this decision, three conditions were identified, where a colour per se could be registered as a trade mark: 1) where it is sign; 2) which is capable of graphical representation and 3) capable of distinguishing the goods or services of one undertaking from those of other undertakings.
This matter was in relation to Cadbury’s Trade Mark Application No 2 376 879 for the Cadbury Purple “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”
In the judgment Sir John Mummery concluded that the description “or being the predominant colour” opened the door to a multitude of different visual formats, as it implied other colours and visual material not described in the application. Therefore, this was not a sign graphically represented in the specific, certain, self-contained and precise manner required to register a trade mark.
The Court of Appeal held that this did not define a sign within the meaning of section 1(1) of the Trade Marks Act and was invalid.
Appeal of Mark 361
In relation to Mark 361, Mr Justice Meade identified the issue to be:
“Does [Mark 361], by not referring to the degree of application to the packaging, avoid the problem that the Court of Appeal found afflicted the mark in CoA 2013?”
Looking at CoA 2013, Meade J identified that to be registrable, a trade mark must satisfy the tests of being clear, precise, self-contained, easily accessible, intelligible, durable and objective, and that reference to a colour code may be sufficient to meet these tests.
The description for Mark 361 was for the Cadbury Purple to be “applied to the packaging goods”. The Hearing Officer found that this description was too wide without any limitations, such as a limitation to the whole surface, or the predominant part, therefore opening up the same issue of multiple forms detailed in CoA 2013.
Meade J agreed with the Hearing Officer’s rationale and went further to state that it was worse than the formulation considered in CoA 2013, stating that:
“Removing the wording held by the Court of Appeal to let in multiple forms and to be objectionably ambiguous is cosmetic at best and does not help. It preserves all the practical problems of scope and adds more.”
Appeal of Mark 822
In relation to Mark 822, Mr Justice Meade identified the issue to be:
“Is [Mark 822], which is in what I will refer to as “Libertel form” (i.e. colour per se as defined by Pantone designation but without reference to the manner of use) capable of being a sign, or does it also run into the problems found by the Court of Appeal?”
The Hearing Officer applied the same reasoning they had used for Mark 361, that as the description failed to identify any limitations on the use, it could not be registered.
Meade J concluded that this decision was wrong, as the application is conceptually just one single thing: the Cadbury Purple, this differed significantly from the description used in Mark 361 which allowed for multiple forms of the trade mark. He referred to Libertel which allowed for the colour “per se” to have a distinctive character.
Meade J went on to explain that the use of the colour would be the same across different contexts, such as packaging or advertising and that there is no ambiguity in relation to a sign which is a single colour by itself.
Further, in response to the Comptrollers submission that Libertel form marks were only permissible “in the right circumstances”, Meade J stated that “if Cadbury’s circumstances are not right, I do not see how any other applicant would do better”.
In making his distinction between Mark 361 and Mark 822, Mr Justice Meade emphasised that allowing ambiguity in a trade mark would result in an unfair competitive advantage for the trade mark applicant. If a mark is registered with ambiguity, it would have a negative impact on the competitors’ ability to trade, as they would not be able to rely on the register to understand the full scope and extent of the registration. For practitioners, this must be recognised as a key focus when considering and applying CoA 2013.
Within his decision, Meade J has clarified the position that colour marks without a description of use can satisfy the requirements of s. 1(1) of the Trade Marks Act. However, there remains a significant hurdle for trade mark applicants to evidence that the colour “per se” has acquired distinctiveness in the mind of the consumer. Cadbury’s position was unique, having used their internationally recognised colour code at the core of their branding for over a century.
Furthermore, Meade J acknowledged that his conclusion “does not help with the very difficult work that arises from assessing factual distinctiveness under s. 3(1)(b)” which was not addressed in the proceedings.
This decision provides further guidance when assessing colours per se, however there remains many challenges for applicants applying for colour trade marks.
 The EU Directive 2015/2436 was implemented in UK Law by The Trade Marks Regulations 2018 on 14 January 2019 by making amendments to the Trade Marks Act 1994. Article 2 of the EU Directive is implement in s.3 of the Trade Marks Act 1994.
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