Court of Appeal clears up purple haze

Cadbury’s bid to trademark its wrapper colour falls at the last hurdle as Scrabble case founders

Can a confectionary giant really claim to own the colour purple? This was one of those court battles that hinged largely on a technicality, a battle that seemed minute on paper but had major consequences for the feuding parties – Cadbury and Nestlé.

At issue was whether Cadbury could trademark the iconic purple colour (Pantone 2865c) of its Dairy Milk bars.

Cadbury

The battle dates back to 2008, when Nestlé moved to oppose the trademark registration by its rival, which at the time ‘applied to the whole visible surface or being the predominant colour applied to the whole visible surface of the packaging of the goods’. The Swiss confectioner argued that the description was too vague, complaining that the inclusion of the word ‘predominant’ effectively allowed Cadbury to extend the trademark to cover any colour combination as long as it included purple. It was this word that catapulted the case into court.

The Court of Appeal (CoA) ruling came last month (4 October) and proved useful reading for intellectual property (IP) litigators. The appellate justices quashed the decision handed down by Mr Justice Birss a year earlier. It was a bold move by the CoA.

Birss J is a former judge of the Patents County Court and his ruling had been in full agreement with the decision given by the head of the UK’s Trade Mark Tribunal in the original challenge, which had said that the term was not overtly vague.

The CoA said otherwise. Such a word could give rise to a myriad of colour combinations and permeations. In his ruling Lord Justice Mummery said: “To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.”

The same competitive advantage would be afforded to the makers of Scrabble should it be granted trademark rights over the ‘tile mark’, the CoA added.

This separate appeal was joined to the Cadbury dispute because it focused on whether evidence of acquired distinctiveness was relevant when it came to trademark ownership.

Again a major corporate had attempted to register a trademark only to face a challenge from a rival.

In this particular case Scrabble owner JW Spear & Sons had wanted to register what it called a ‘tile mark’ – the blank ivory-coloured Scrabble tile with “on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1–10”.

Online games outfit Zynga had applied to have the trademark struck out through a summary judgment last year. The move was made in response to a trademark infringement case brought against it by JW Spear and its US owner Mattel Inc over the use of the tiles.

The High Court said the attempt to enforce the trademark “amounts to an attempt to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter and number combination on the top surface”.

The CoA agreed, with Mummery LJ stating: “The tile mark is not ‘a sign’ as required by the first condition of Article 2 [of a European trademark directive]. It potentially covers many signs achievable by numerous permutations, presentations and combinations of the subject matter of the registrations.”

Commenting on the case, 3 New Square barrister Douglas Campbell said it was surprising for the High Court to grant the summary judgment application. “The Scrabble proprietor was not even given the chance of a trial to show that the public actually recognised its tiles as distinctive of Scrabble,” he said, adding: “But then, it was being greedy.”

There is no shortage of major corporates trying to push back the legal boundaries in the field of IP. Earlier this year Briggs J was asked to decide when Greek yoghurt could be legally deemed to be Greek yoghurt.

This was a major IP battle between Fage UK – the makers of Total Greek Yoghurt – and New York-based Chobani. 

The outcome? Fage won, with Briggs J saying that Chobani calling its yoghurts Greek amounted to misrepresentation and that most consumers who bought Greek yoghurt expected it to be made in that country. 

From Cadbury purple to Christian Louboutin red and Harrods green, these big names have spent years building their brands to be instantly recognisable. Protecting that commodity is well worth the legal spend.