Nestlé trumps Cadbury in purple trademark appeal
However, lawyers stress confectionery manufacturers could still be sued if their packaging used the same purple Cadbury uses.
Cadbury first applied to register the signature trademark for a wide range of products in October 2004 and Nestlé opposed it.
The Intellectual Property Office registered the hue, Pantone 2685C, and the High Court upheld that. But the ruling today against Cadbury owner Mondelēz International overturns those earlier decisions.
Nestlé stated: “We welcome the Court of Appeal’s decision to uphold Nestlé’s objection against Mondelēz’s proposal to trade mark its Dairy Milk ‘Purple’ colour across a broad range of products. We believe this was the right outcome from a legal perspective.”
The question now is whether Cadbury intends to contest the verdict. A Cadbury spokesman said: “Our colour purple has been linked with Cadbury for a century and the British public has grown up understanding its link with our chocolate.
‘Possibility of an appeal’
“We are studying this particular ruling and will consider our next steps, which include the possibility of an appeal.”
Adrian Toutoungi, partner and intellectual property specialist at law firm Eversheds, told FoodManufacture.co.uk he thought Cadbury would be unlikely to contest the ruling in the UK Supreme Court.
“In principle Cadbury can appeal to the Supreme Court, but it would need to be given leave to do so. It does hear intellectual property appeals, but only a few every year, so it’s a fairly remote chance.”
However, given Cadbury’s consistent lengthy defence of its brand, Ed Meikle, partner, intellectual property, at law firm DWF said a counter-attack by Cadbury was highly probable. That could take the form of seeking clarification from the European Court of Justice.
“This is a niggling contest between them and I would be surprised, given the importance of the issue to Cadbury, if it does not appeal. It is absolutely fundamental to its business and Nestlé knows that it’s a huge distraction.”
In any case, Meikle stressed because Cadbury’s purple branding had a long history of use, it could still prosecute other manufacturers who used it for similar products, thus confusing consumers.
‘Protected by over 100 years of use’
“Cadbury is protected by over 100 years of use of its purple and it would be a brave Nestlé to suddenly rebrand its Lion Bar [for example] using the same colour. It will not be bringing out any chocolate any time soon with the same shade of purple.”
Cadbury’s original trademark application refers to: “The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”
The appeal court’s decision hinged on the fact that this wording was imprecise and open to inconsistency, particularly because it failed to define what “predominant” meant.
In his conclusion, judge Sir John Mummery stated: “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.”
Over the years, Nestlé’s opposition to Cadbury’s trademark registration has resulted in the original application being limited to fewer and fewer types of products.
