Société des Produits Nestlé S.A. v. Cadbury UK Ltd.
By Anton Ziajka – Edited by Abhilasha Nautiyal
Société des Produits Nestlé S.A. v. Cadbury UK Ltd.,  EWCA (Civ) 1174 (October 04, 2013)
Judgment hosted by BAILII
Britain’s Court of Appeal (Civil Division) reversed an order of the High Court of Justice (Chancery Division) that had approved for registration Cadbury UK Ltd.’s (“Cadbury”) Trade Mark application No. 2 376 879 (“the ‘879 application”) for a specific shade of purple to be used on the packaging of its chocolate products. The Court of Appeal held that Cadbury’s color mark did not qualify as a trade mark under the Trade Marks Directive 2008/95 (“the Directive”). 2008 O.J. (L 299) 25, 26 (EC). The Court held that “an application to register a trade mark must satisfy three conditions …: (i) there must be a sign; (ii) it must be capable of graphical representation; [and] (iii) it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.” Société des Produits Nestlé S.A. v. Cadbury UK Ltd.,  EWCA (Civ) 1174 at ¶15. The Court concluded that Cadbury’s impugned mark did not constitute “a sign” that is “graphically represented” and thus failed to satisfy conditions (i) and (ii) of Article 2 of the Directive. Id. at ¶51. To allow registration of a trademark with such vagueness, the Court noted, would offend both “the principle[s] of certainty…[and] of fairness,” in part because “competitors… would not be able to tell from inspecting the register the full scope and extent of the registration.” Id. at ¶52.
The Guardian and World Intellectual Property Review provide coverage of the decision. The Washington Post compares the decision with several prominent United States cases involving color trade marks. The IPKat provides further analysis and commentary on the case and related decisions.
Cadbury’s 2004 application to the UK’s Trade Marks Registry sought registration for a specific shade of purple, denoted 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.” Société des Produits Nestlé S.A. v. Cadbury UK Ltd.,  EWHC (Ch) 2637 at ¶2. In 2008, the Registry accepted and published the application. Nestlé S.A. filed its opposition to the application soon thereafter. Id. at ¶7.
The Court of Appeal, in its October 4 judgment, stipulated that a valid trademark must include “clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity,” and must not “take on a multitude of different appearances, which would create problems for registration of the mark and give an unfair competitive advantage over competitors.” Nestlé v. Cadbury,  at ¶15. The Court found that Cadbury’s description of the color purple as “the predominant colour” presented an unacceptable level of graphical ambiguity “as a result of its implied reference to other colours and other visual material not displayed or described in the application.” Id. at ¶50. The Court reasoned that the application, therefore, did not cover “a single sign conveying a message, but… multiple signs with different permutations, presentations and appearances,” id. at ¶51, and that “there is wrapped up in the verbal description of the mark an unknown number of signs. That does not satisfy the requirement of ‘a sign’ within the meaning of Article 2” of the Directive. Id. at ¶55.
Although this decision does not preclude the possibility that, under certain circumstances, a color in the abstract could qualify as “a sign,” id. at ¶15, it may raise new hurdles for registering colors, smells, or other “exotic” trademarks in the UK. Id. at ¶13. As reported by The Guardian, one trade mark lawyer predicts that, “To succeed in protecting use of a colour in the future, brand owners will need to think carefully about how they can represent the colour graphically. The public needs clarity over the rights given.” In his concurring opinion, Sir Timothy Lloyd proposed one such avenue, suggesting that Cadbury’s trademark application may have achieved sufficient certainty had it specified a minimum ratio, such as 50 percent, of the surface area that would be covered by the shade of purple. Nestlé v. Cadbury,  at ¶63.