Sunday, 12 February 2012

Chocs away for registration of Cadbury's purple

Author: Ilanah Simon Fhima (Faculty of Laws, University College London)

Application by Cadbury Ltd to Register a Shade of the Colour Purple for Goods in Class 30; Opposition by Société des Produits Nestlé SA, United Kingdom Trade Marks Registry, O-358-11, 20 October 2011

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jpr210, first published online: February 10, 2012

A senior hearing officer in the IPO rules on the registrability of a single colour mark.

Legal context

Following the decision of the Court of Justice of the European Union (ECJ) in Libertel Groep BV v Benelux-Merkenbureau (C-104/01) [2003] ECR I-3793, it is clear that single undelimited colours can be registered as trade marks. However, it is equally clear that colour marks face many challenges, including how they can be adequately graphically represented and whether consumers will view them as distinguishing the origin of the goods or services on which they are used. In practice, there have been few decisions on the registrability of single colours since Libertel. In this decision, Hearing Officer Allan James provides much needed guidance on the correct approach to registering a colour mark that will be familiar to many UK consumers.

Facts

In October 2004, Cadbury applied to register ‘The colour purple (Pantone 2685C), as shown in the form of application, applied to the whole visible surface or being the predominant colour applied to the whole visible surface, of the packaging of the goods’, accompanied by a colour sample, for ‘chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes’. After the examiner objected to the application for want of distinctive character, Cadbury produced evidence of acquired distinctiveness and the application was accepted and published. However, Nestlé opposed the application, arguing that it was not adequately graphically represented, was not a sign, and was incapable of distinguishing. Nestlé also claimed the mark fell foul of sections 3(1)(b), (c), and (d) of the Trade Marks Act 1994, had not acquired distinctive character, and had been applied for in bad faith because Cadbury had no intention to use the mark for the ‘whole visible surface’ of goods, or for the wide range of goods specified.

Analysis

Section 3(1)(a) grounds

All three section 3(1)(a) grounds were rejected by the Hearing Officer. Following Libertel, colours clearly can be signs, but they cannot be presumed to be signs. A colour might be a simple property of the goods, eg brown is the natural colour of chocolate, or may be incidental, eg the colour of the shoes of a child shown eating a bar of chocolate on the packaging of the chocolate. Neither type of use would send any information to consumers. However, there was nothing suggesting that the applied-for colour was a property of chocolate.

Nestlé had argued that the colour was not a sign because it encompassed an infinite number of signs. This too was rejected by the Hearing Officer. The fact that the mark envisaged the use of variable quantities of the mark did not matter as the mark itself, the colour purple Pantone 2685C, was fixed and stable. Any other answer would undermine the ECJ's previous findings that colours in the abstract can be registered. The applied-for mark was not analogous to the mark applied for in Dyson Ltd v Registrar of Trade Marks (C-321/03) [2007] ECR I-687 because the colour was not a mere property of the goods. Nor was it excluded under Heidelberger Bauchemie GmbH's Trade Mark Application (C49/02) [2004] ECR I-6129. While colour combinations must be presented in a predetermined and uniform way, this does not mean that contours or other methods of spatial definition must be utilized for either colour combinations or single colours. That the specification mentioned the use of purple as a ‘predominant’ colour did not render the applied-for mark a colour combination. While it envisaged the use of the purple with other material, this other material did not constitute part of the mark. Likewise, Nestlé's argument that the representation of Cadbury's mark would permit a variation in the use of the colour ranging from an uncertain percentage to 100 per cent was also flawed. It is not normally necessary to specify how a trade mark will actually be used as part of the graphic representation. Libertel made no mention of such a requirement, which was particularly significant because that case, like this one, involved a single colour. The requirement in Heidelberger Bauchemie was for a ‘fixed relationship’, not a spatial definition demonstrating actual use. Indeed, the cases suggested that it would have been acceptable for Cadbury to have requested registration merely by reference to the Pantone number, without mentioning the actual use.

Nestlé argued that the inclusion of the words ‘being the predominant colour’ was too vague and meant that the sign was not adequately graphically represented. This too was rejected. The mere provision of a colour sample, accompanied by a Pantone number, would have satisfied the Libertel requirements for the graphic representation of the colour. The added wording made the sign no less clear, precise, self-contained, easily accessible, and intelligible, but arguably made the representation clearer. Although the wording required a decision-taker to judge whether the colour was the ‘predominant’ one used, this was no more complicated than any of the other judgments that would be made during infringement proceedings.

In relation to whether the mark was capable of distinguishing, it was clear from Libertel that a single colour is not incapable of distinguishing. In any event, this aspect was contingent on the outcome of any objections under sections 3(1)(b), (c), and (d), and could not apply if acquired distinctiveness was shown.

Bad faith

Nestlé claimed that Cadbury had demonstrated bad faith as, at the time of registration, it had no intention to use the colour mark ‘applied to the whole visible surface … of the packaging of the goods’. The Hearing Officer accepted that a lack of intention to use a mark may constitute bad faith. However, there was no lack of an intention to use here. The Cadbury mark was not a bundle of marks, consisting of varying percentages of purple rolled into one. Instead, the use of the colour purple on the entirety of the packaging was just the ultimate example of the colour being predominant on the packaging of the goods. Moreover, there was evidence that one Cadbury product had been sold in a wrapper that was completely the relevant shade of purple. Nestlé's argument that the colour had not been applied to the ‘whole visible surface’ because the brand name was also present in a different colour was dismissed as ‘absurd’ and Cadbury's use of the words in such circumstances could not constitute activity which fell short of the standard of commercial behaviour observed by reasonable businessmen in the area.

Lack of distinctiveness

Cadbury accepted that the colour mark was not inherently distinctive. Consequently, there was no need to examine the mark under sections 3(1)(b), (c), or (d). Instead, the question was whether the mark had acquired distinctiveness by the application date. The Hearing Officer was guided by the ECJ's decisions in Libertel, and Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehor Walter Huber (C108/97) [1999] ECR I-2779. These required him to remember that colours would not necessarily be perceived by consumers in the same way as word marks, but that the method of, and factors to be taken into account for, assessing acquired distinctiveness remained the same. Additionally, the general interest in not unreasonably restricting access to colours had to be considered, although this had to be done by ‘critically assessing’ acquired distinctiveness for every item specified, rather than through refusing registration where a mark was shown to have acquired distinctiveness.

Clearly, there was an association of some sort in the public's mind between the purple colour and Cadbury, but the relevant question was whether the mark was distinctive of the goods, rather than just the company. On the evidence, the mark was distinctive for chocolate in bar and tablet form. A shade of the colour purple had been used for the Dairy Milk chocolate bar, which was the best-selling confectionery product in the UK, for nearly 20 years. Cadbury spent £35m on advertising including the colour in 2004 alone and the colour had been used in promotional contexts, including sponsorship of the Commonwealth Games and a popular television soap. Evidence from trade associations pointed to acquired distinctiveness, as did a survey showing 44 per cent unprompted association between the colour and Cadbury. Furthermore, third party use of purple on chocolate bars was limited to use on an ‘imitation’ own brand product, use which started a mere four months before Cadbury's application and which was limited in scale. The Hearing Officer also noted that exclusivity is not required for acquired distinctiveness. In order to show acquired distinctiveness, it was necessary to show that consumer association went beyond merely being ‘reminded’ of Cadbury. However, evidence of detrimental reliance such as confusion was not required as such evidence was unlikely to come to light in relation to a low cost item. Instead, reasonable inferences could be drawn from the use of the mark.

Purple had also acquired distinctiveness for chocolate confectionery products consisting just of chocolate since Cadbury had used the mark for over a decade for popular products fitting that description. Moreover, because these products were pure chocolate, there would have been a spill-over effect from Dairy Milk. However, there was insufficient evidence to show acquired distinctiveness for other forms of chocolate confectionery. Likewise, the mark had acquired distinctiveness for drinking chocolate and preparations for making drinking chocolate. Again the goods had been on sale in purple packaging since the early 1990s; Cadbury had 55 per cent of the drinking chocolate market in 2007 and survey evidence showed 69 per cent recognition from the same year. While this was three years after the application date, the Hearing Officer judged it unlikely that such a strong position could have been built up from nothing. The distinctiveness for chocolate bars was once again helpful, as drinking chocolate would be perceived as chocolate in liquid form.

However, the mark lacked acquired distinctiveness for chocolate assortments and chocolate cakes. In the former case, the evidence suggested that such products were less associated with Cadbury than with chocolate per se. Moreover, its best-selling assortment had been sold in a blue, rather than a purple box. In relation to the latter, there was insufficient evidence of how purple had actually been used for cakes.

Practical significance

This is a decision where less, arguably, would have been more. Cadbury's presumably well-meaning, but unnecessary attempts to clarify the scope of its use of the shade of purple applied for led directly to the challenges based on whether the mark was a sign, whether it was adequately graphically represented, and whether it was applied for in bad faith. However, the Hearing Officer took a common-sense approach to these challenges, true to the spirit of Libertel, which makes it clear that single undelimited colours are registrable.

In relation to acquired distinctiveness, the Hearing Officer viewed a detailed consideration of acquired distinctiveness in relation to each of the products applied for as the way to ensure that concerns about monopolizing colours could be taken into account. Yet, one would expect this form of analysis to take place in relation to judging acquired distinctiveness of every form of mark. Also of interest is how the very strong acquired distinctiveness in relation to chocolate bars and tablets had a ‘trickle-down’ effect to other products viewed essentially as chocolate, even though the evidence of acquired distinctiveness in relation to those products was not as strong. Finally, the Hearing Officer raised, but did not solve, an enduring problem: how to distinguish between mere association between a mark and a company, as opposed to acquired distinctiveness as to origin—an issue which is particularly acute where a mark is as familiar as Cadbury's purple is.

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