After a 4-year battle, it has been held that Cadbury UK Limited’s (“Cadbury”) UK trade mark (“UKTM”) is a single mark, not a series of marks. This follows in a long line of Kit for Kat between Nestle and Cadbury and after this latest blow the chocolate wars look set to continue.
Single or series?
In 1995, Cadbury registered a UKTM for the colour purple used for their branding, Pantone shade 2685C. The description of the mark is ‘the colour purple… applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging to the goods.’ The goods being ‘chocolate in bar or tablet form.’
In 2004 Cadbury applied for a further trade mark, with the same description as the 1995 mark but covering a wider list of goods, such as chocolate-based beverages and chocolate cakes. However, this application was opposed by Nestle in 2013. On Appeal the judge held that the use of “predominant” opened the mark up to ‘a multitude of different visual forms’ therefore lacked the clarity required for registration. On this basis Cadbury sought to amend their 1995 mark, due to the replicative wording.
Cadbury argued that the 1995 mark was actually a series of marks and sought to delete the “predominant” part of the description, being the second mark in the series. Leaving only the ‘whole visible surface’ description as a single mark. A series of trade marks can consist of up to six marks within a single application. Any differences between the marks must be minor and the marks must look, sound and mean the same.
The Hearing Officer held that; the application had not been for a series of marks; the “predominant” colour wording did not constitute a trade mark so could not benefit from provisions afforded to series marks; and under s.44 of the Trade Marks Act 1994, alterations to registered marks are only allowable in limited circumstances i.e. to the proprietor’s name/address.
Cadbury appealed this decision to the High Court who dismissed the appeal. They then further appealed to the Court of Appeal.
The Court of Appeal decision
After hearing submissions from the Registrar and Nestle, the Court of Appeal upheld the Hearing Officer’s decision, agreeing that the mark was a single mark and did not satisfy the requirements to be considered a series of marks.
A series of two marks could consist of, for example, one logo in colour and the same logo in black and white. The Court therefore held that, whilst Cadbury’s description included alternatives, these did not constitute separate marks but an ‘imprecise description of a single mark’. The “predominant” wording would allow for too many variants to be considered one mark within a series of marks.
Whilst the 1995 mark is still valid, the Court of Appeal’s remarks in this decision and in relation to the 2004 mark around the lack of clarity, leaves it potentially vulnerable. After Cadbury successfully opposed Nestle’s attempts to register a UKTM for their four-fingered KitKat chocolate bar, and invalidated their EU Trade mark (“EUTM”) for the same, it remains to be seen if Nestle will now again try to challenge the 1995 mark.
Hope is not all lost for Cadbury. Having adopted the iconic purple colouring for their dairy milk wrappers in the 1920s, Cadbury can rely on their goodwill therein to argue passing off, should any other company be tempted to start using a similar colour scheme for their chocolate. However, this is not the full protection they sought when registering their mark.
This ruling serves as a reminder to be precise when registering trade marks as even those which are well-known are not necessarily safe.
On December 17, 2018