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.
Following the decision of the Court of Justice of the European Union (ECJ) in Libertel Groep BV v Benelux-Merkenbureau (C-104/01)  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.
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 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.
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)  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.
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.