IPO invalidates two Cadbury trademark applications

Two trademark applications filed by Cadbury for a specific shade of purple have been invalidated, with one other proceeding to evidence rounds.

This decision, made by Louise White, comptroller-general for the UK Intellectual Property Office, is another failed attempt by Cadbury to trademark the colour which was previously rejected by both the UK High Court and Court of Appeal.

In this case, the applications were opposed by Société Des Produits Nestlé under section 3(1)(a) of the Trade Marks Act of 1994, which prohibits the registration of marks that do not meet the requirements of section 1(1), which defines a trademark as a sign that is able to be represented in a way which allows the public to “determine the clear and precise subject matter of the proprietor”.

In its opposition, Nestlé argued that the trademark application failed to adhere to “durability” requirements as, practically speaking, the sample colour on the document could fade over time and discredit the accuracy of the trademark.

Nestlé also directly opposed the phrasing of “whole visible surface of the packaging of the goods”, which it contended is subjective and relies on the imagination of the individual.

It was further contended by Nestlé that the form in which Cadbury referenced the shade in its application, through the Pantone shade matching system, did not fully comply with section 3(1)(a).

However, Cadbury responded that the trademark colour was identifiable “both graphically and by Pantone number”, as required for sufficiency.

This was supported by White in her assessment of the application.

White also considered each of the points of opposition submitted by Nestlé, opposing the claim that the colour sample could fade over time on the basis that it could be assigned an internationally-recognised identification code.

It was also found that Nestlé’s argument that the shade would appear different depending on the shape and size of the packaging was invalid.

White concluded that, owing to Nestlé’s high number of successes in this dispute, Cadbury was liable to pay a contribution cost of £1,800 to cover Nestlé’s official fees for preparing statements and attending a hearing.