Colour trade marks: the future is purple for Cadbury

Author: Eddie Powell

The High Court has upheld Cadbury’s right to trade mark the colour purple on its chocolate products.

In 2008 the UK Trade Mark Registry granted Cadbury’s application to protect the colour purple for its chocolate product packaging. The trade mark gave Cadbury the right to prevent other people using the colour in respect of “Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate”. As part of its application, Cadbury filed evidence of the distinctiveness it had acquired through its use of the colour purple since 1914.

Nestlé opposed the application but this was rejected by the Trade Mark Registry, and so Nestlé appealed the decision to the High Court.

The High Court upheld the Registry’s decision to grant the colour trade mark, but accepted Nestlé’s claim that the trade mark should be restricted to milk chocolate products.

Conventional trade marks such as trade names (e.g. “Cadbury”) or logos (such as the image of a glass and a half of milk on a bar of Cadbury’s Dairy Milk) do not give rise to the same conceptual problems as what have been called “exotic” trade marks, such as smells and colours.

A trade mark is defined as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. [It] may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging“.

The main part of Nestlé’s argument was that the mark that Cadbury applied for was not a “sign capable of being represented graphically” and so was not registrable as a trade mark.

In a previous case, the court had concluded that a colour sample does not on its own constitute a graphical representation. But a colour sample, along with a description in words and a designation of the colour using an internationally recognised identification code, may be considered to constitute a graphic representation. In this case, Cadbury’s chosen shade of purple (Purple Pantone 2685C) was held to be an example of an internationally recognised code.

Another relevant factor in considering whether a colour may constitute a trade mark is the context in which it is used. For example, it was suggested that the colour brown could not have been registered as a trade mark by Cadbury, since it is the natural colour of chocolate.

A colour may acquire distinctiveness through use over time, as customers become accustomed to associating a particular colour with a certain brand. This can be of enormous value to retailers.

Cadbury’s purple trade mark isn’t the first example of a company having secured a trade mark over a colour that is synonymous with its brand. Christian Louboutin’s so-called Red Sole Mark has recently been the subject of litigation in the US, with the US Appeals Court in Manhattan deciding that the red sole of a shoe had acquired a particular meaning, recognisable as the Louboutin brand. Other examples include Harrods’ dark green, Tiffany’s blue boxes and Heinz’ turquoise cans. These colours are not banned from use by anyone else altogether, but are not allowed in the specific market where they would cause confusion with the trade mark holder’s product(s).

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