In the World of Chocolate, Cadbury owns part of the Rainbow

Cadbury won a surprising victory on October 1, 2012 by getting the colour purple as a registered trade-mark under the Trade-mark system of the European Union.

In Société des Produits Nestlé S.A. v. Cadbury UK Limited, The High Court Chancery Division of England, reasons given by the Honourable Judge Birss QC, held that Pantone 2685C (the colour purple) was sufficiently regarded by the public as associated with Cadbury chocolate to register the colour as a protected mark.  The protection, after some discussion of the Court, would be limited to Pantone 2685C associated with the wares: “Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate” (para 84).  In the decision, Judge Birss QC acknowledged that colours are registrable trade-marks in the European system under the Art. 2 definition (para 63).  What makes this decision surprising is that a former decision was reached in Australia in 2006 which came to the opposite conclusion.

Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) [2006] was a passing off action decided in the Australian Federal Court.  The Honourable Justice Heerey, in giving reasons for judgement, concluded that Cadbury did not have any rights in the colour purple because they lacked the exclusive reputation of using purple in connection with chocolate.

Why the apparent discrepancy between these two decisions?  One likely explanation is that the courts in these two cases were provided with different evidence.  For example in the Australian decision, it was pointed out that Nestlé, chief competitor to Cadbury, uses a dark purple colour, similar to that of Cadbury’s, in their chocolate product packaging. In the UK decision, it was pointed out that Cadbury had been using the colour purple on its product packaging since 1914, and the opponent Nestlé accepted the finding that Cadbury’s purple mark was distinctive.  Perhaps the Pantone 2685C was a sufficiently narrow colour for Cadbury to prove that they had distinguished themselves from Nestlé.  But whatever the reason, the court in the UK decision was clear that a colour is registrable under the EU system, provided it had a distinct reputation in a class of goods.

Has protection of marks become too broad, with the inclusion of simple colours, to ensure fair competition?  The UK Cadbury decision is not the first time a distinctive colour has been registered as a mark.  For example, in Qualitex Co. v. Jacobson Products Co., the US Supreme Court held that a colour on its own does fit within the defined limits of marks which can be registered under the US Lanham Act.  The difficulty in registering a colour as a mark appears to be convincing a court that your mark has a distinct reputation in connection with the goods sold.

Take the Cadbury case as an example, the court recognized that Cadbury did not have the kind of reputation necessary to protect the colour purple in connections with all their products.  That is why the court limited the class of goods that would receive this protection to “Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate”.  The court also recognized that Cadbury was asking for the protection regarding a very specific shade of purple (Pantone 2685C), which opponent Nestlé conceded was distinctive of Cadbury.  In addition to the limited shade, Cadbury further had to identify that the colour was “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods” (para 2).  Therefore their protection is limited to a particular shade, applied predominantly on packaging of specific chocolate products.

Since the scope of that protection is extremely narrow, I think that it is difficult to assert that this kind of protection is unfair. Applicants trying to register colours as marks will have to prove that the colour is distinctive of the goods being applied for (see IP Osgoode’s coverage of another famous trade-mark dispute involving a colour).  The evidentiary burden on potential registrants appears to be high enough to limit colour trade-marks to the few applicants that will be capable of proving a colour’s distinctiveness to their wares.  If they can do that, on what grounds do we reject registration?  I think that so long as the colours protected remain specific and apply only to a very limited scope of goods, the system of trade-mark protections is not abused by registering colours as marks.

Adam Stevenson is a JD Candidate of Western University, faculty of law.

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