Cadbury’s appeal falls flat as Registrar of Trade Marks refuses to delete part of their purple trade mark

by Sahana Pal

Cadbury’s appeal for deleting an alleged purple series mark from UK Trade Mark Register was recently dismissed by the High Court on 18 April 2016.[1]

The original application was registered on 19 May 1995 (the 876 mark) for a swatch of Cadbury purple and the description of which was given as “The mark consists of the colour purple”. There was an initial objection based on lack of distinctiveness which was eventually overcome. Then the Registrar was concerned with the description of the mark and, following a formal request by Cadbury to clarify that description by a proposed form of words, on 9 September 1997 the Registry responded with a suggestion that the mark be amended to “The mark consists of the colour purple, as shown on 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.”.

But following the 2014 Court of Appeal decision in Societe Des Produits Nestle SA v Cadbury UK Ltd , [where it was held that Cadbury’s attempt of registration of the colour purple (different from the 876 mark) as “applied to the whole visible surface” or being “the predominant colour applied to the whole visible surface” of packaging of chocolate goods lacked the required clarity, precision, self-containment, durability and objectivity to qualify for registration and did not satisfy the requirement of “a sign” that was “represented graphically” for the purposes of EU Directive 2008/95 Article 2] Cadbury apprehended an invalidity attack on its 876 mark as well, and proposed to strike off the section “or being the predominant colour applied to the whole visible surface” from their description – pursuant to the Trade Mark Rules 2008 r.28(5) – thereby limiting the mark to a sign consisting of the colour purple applied to the whole visible surface of the packaging of its goods.

However, the hearing officer dismissed Cadbury’s application, stating that the Court of Appeal’s judgment could not be read to the effect that the verbal description of the mark was actually a description of two marks, and accordingly there was no mark to be deleted at all, making any further proceedings contrary to Trade Marks Act 1994, s 44. Cadbury appealed, contending that the officer had made a material error of principle in not recognising that the 876 mark was a series mark consisting of two marks that differed only as to matters of a non-distinctive character not substantially affecting the identity of the mark, and that, once his error was acknowledged, the appeal had to be allowed.

Mr Baldwin QC, sitting as a Deputy Judge of the High Court, took note of the arguments and held that Cadbury’s proposal was “fundamentally flawed” as

the 876 mark is not a series mark, the description is not of two marks or of a series of marks, there are no identifiable members of any series which might be the subject of a request for deletion, accordingly any request for such a deletion cannot be entertained and the appeal must be dismissed.

He further noted that the Court of Appeal’s reasoning clearly did not apply here, since there the Court had referred to the description of the mark as a whole and did not distinguish between them as two separate marks. In the current case, the mark in suit’s ‘alternative’ description encompassed a large but unknown number of signs with only one characteristic in common – purple being the predominant colour applied to the whole visible surface of the packaging. That single common characteristic was insufficient to satisfy the section 41 criteria for series trade marks, because in a hypothetical sign, although purple might be the predominant colour in terms of area, there could be yellow or green spots as well, which contributed to the sign’s overall distinctive character. The disputed 876 mark thus covered a number of marks which were not part of any series, and consequently, no deletion of the requested wordings was possible.

[1] Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks [2016] EWHC 796 (Ch)

Sahana Pal

Assistant Editor, QMJIP