UK High Court provides clarity on registration of colour trade marks

The High Court has handed down a decision allowing Cadbury to register two trade marks for the colour purple defined by the Pantone number and the colour's application to the "whole visible surface of the packaging of the goods" and the Pantone number alone (the colour per se).

The decision provides a number of recommendations for brand owners looking to register a colour mark:

• The use of an internationally recognised colour code, such as Pantone or RAL, when describing the mark, is necessary.
• Where a colour mark is to be used in a certain way, a clear and precise summary of how the colour is to be used is essential; for example, that the colour is applied to the whole visible surface of the packaging of the relevant goods.
• Applicants must not create a description or representation of a colour mark that could be viewed as protecting multiple distinct forms. As such, ambiguous phrasing lacking specificity must be avoided; for example, using words such as "predominant" or applying the colour to the "packaging of goods" without further limitation.
• However, where the colour mark is the colour per se, this is seen conceptually as a "single thing" and perhaps easier to obtain protection for.

Background

Cadbury has sought to register colour marks for its colour purple over a number of years. Previously, in 2003, the rejection of an application was upheld by the Court of Appeal because the description ambiguously described the colour as being the "predominant colour" of the visible surface of the packaging, with no further limitations.

With respect to the current case, Nestlé brought oppositions against three applications by Cadbury to register the colour purple as a trade mark for chocolate products:

1. "The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods".

2. " The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of the goods".

3. "The colour purple (Pantone 2685C), as shown on the form of application".

The UK Intellectual Property Office (UKIPO) refused the opposition of the first mark because the description was held to be sufficiently clear. However, the opposition in relation to the second and third marks was allowed, ruling that both presented the same ambiguity issues underscored in the 2013 appeal.

Cadbury appealed the decision. Although Cadbury and Nestlé settled their dispute, the Comptroller-General of Patents, Designs and Trade Marks intervened in the appeal due to the significance of the legal issues raised on the description of colour marks.

High Court ruling

Mr Justice Meade agreed with the UKIPO's decision to allow the opposition of the second mark (the colour "applied to the packaging of the goods"), but not the third mark (the colour per se).

Akin to Cadbury’s prior use of the word "predominant", the court decided that the second mark's description rendered it "significantly, undesirably and unnecessarily unclear whether combination marks including purple and other colours would be within the scope of the right applied for". The court concluded that this allowed the mark to assume many different forms, which would give Cadbury an unfair competitive advantage.

The judge ruled that the "multiplicity of forms" problem was irrelevant to per se colour mark because the colour per se is "conceptually just one single thing: the colour purple" and would not change in different contexts.

The judge emphasised that the mark was a pure colour mark, which cannot be refused on the basis of a multiplicity of forms argument unless ambiguity is "let in" by wording like "predominant" – a pure colour mark does not cause such uncertainty.

Osborne Clarke comment

This decision provides clarity for brand owners regarding the registrability requirements for colour marks, where it appears that less is more. Ambiguous phrasing that could lead to the colour taking on a multitude of different forms is to be avoided. However, this judgment, perhaps counterintuitively, suggests that colour marks per se do not suffer this fate and it could now be easier to register per se colour marks rather than trying to add limiting wording as to use.