Cadbury - the Purple One

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Do you think you could recognise a Cadbury chocolate bar from the colour of the packaging alone? 44% of people made the association with no further prompting, according to a study presented to the Intellectual Property Office.

As a result of this familiarity, Cadbury has been allowed to lay claim to a particular shade of purple as a trade mark despite staunch opposition from Nestlé.

 

A distinctive character

You can probably visualise the shade of purple now. Indeed, it is so distinctive, that you can buy, among other things,  dresses, clutch bags and artificial flowers in ‘Cadbury Purple’ from eBay.

If you cast your minds back to our last newsletter, you may remember that Louboutin were prevented by the American Courts from registering a trade mark for use of the colour red on the sole of shoes.

Here’s what the Hearing Officer in the Cadbury case had to say about colour trade marks:

A colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking. Distinctiveness without any prior use is inconceivableHowever, even if a colour per se does not initially have any distinctive characterit may acquire such character.

The Hearing Officer helpfully referred to guidance in a previous case Windsurfing China (Joint cases C-108 & C-109/97) on what may be taken into account when considering whether distinctive character has been acquired:

Market share held by the mark.

How intensive, geographically widespread and long-standing the use of the mark has been;

Amount invested by the undertaking in promoting the mark;

Proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and

Statements from chambers of commerce and industry or other trade and professional associations.

 

Cadbury presented thorough evidence proving that the shade of purple used in their branding had acquired the requisite distinctive character.

Nestlé, however, were having none of it. They objected on the ground, among other things, that the mark is not distinctive and the colour purple is used commonly in the industry.

Nestlé produced a vast list of confectionary products also using the colour purple as

part of their branding. Nestlé also pointed out the popularity of their product the ‘Purple One’, which is covered in an entirely purple package of a shade almost indistinguishable to that of Cadbury’s.

The Hearing Officer considered that ultimately this did not impede on the distinctive character of the particular shade of purple used by Cadbury on its products.

 

Graphic representation

Nestlé argued that the trade mark did not conform to section 3(1) of the Trade Marks Act 1994 because it was not capable of graphic representation. Article 2 of the EU’s Trade Mark Directive, as interpreted in Sieckmann (Case C-273/00) requires a graphic representation to be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

Can a colour trade mark satisfy these conditions?

The Hearing Officer examined this question, noting in particular that a colour sample was vulnerable to fading over time and cannot be described verbally.

However, the Hearing Officer was satisfied that Cadbury’s citing of Pantone 2685C constituted a precise and stable description of the mark.

 

Limited colours, limited registration

In light of the recent high-profile Louboutin litigation, this case represents a triumph for the colour trade mark.  The Hearing Officer did, however, recognise the dangers, stating:

The fact that the number of colours actually available is limited means that a small number of trade mark registrations for certain services or goods could exhaust the entire range of the colours available. Such an extensive monopoly would be incompatible with a system of undistorted competition.

In light of the above, the Hearing Officer was keen to restrict the trade mark’s use to those products for which it had, in fact, acquired a distinctive character, namely ‘chocolate in bar and tablet form; eating chocolate; drinking chocolate; preparations for making drinking chocolate’.

 

Is this approach consistent with the outcome in Louboutin?

Would the same arbiter have considered that Louboutin’s red soles had acquired distinctive character? 

In the Louboutin case it was argued that in the world of artistic design creativity should not be fettered by restrictions on what colours can be used. 

In the food industry the design of the packaging is just one component of the product as a whole. In the fashion world, artistic creativity is pretty much everything.

For this reason, it seems that the potential damage of fettering creativity is more concerning with design based products than foodstuffs.

Fashion and design is a creative expression and should not be reduced to a ‘painting by numbers’ exercise.

Another distinguishing factor here is that Cadbury’s products are extremely commonplace in the UK.  You can see the “purple patch” (as Cadbury’s marketing team like to call it) adorning counters up and down the country in every supermarket, corner shop, petrol station and vending machine. We even have a ‘Cadbury World’ theme park dedicated to the stuff.

Unfortunately, Louboutin is significantly less prevalent in many of our lives (as much as it may pain us!). For this reason, it seems understandable that a Court should find that the red soles had not acquired a distinctive character.

This decision has confirmed that Cadbury is the ‘Purple One’ of the confectionary industry and left Nestlé’s branding Quality Streets behind (sorry, couldn’t resist).

 

Case O-358-11, 20 October 2011

 

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