The Cadbury decision offers a guide to registering marks based on color

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In 2019, the UKIPO sided with Cadbury on one of its applications, which described the mark as “The color purple (Pantone 2685C), as shown on the application form, applied to the entire visible surface of the packaging of the goods However, it sided with Nestlé on the other two claims, where Cadbury had described the mark as “The color purple (Pantone 2685C), as shown on the application form. request, applied to the packaging of the goods” (the ‘361 request) and by reference to “The color violet (Pantone 2685C), indicated on the request form” only (the ‘822 request), respectively.

Cadbury appealed the two claims which had been rejected, but before the appeal could be heard it reached a settlement with Nestlé over Cadbury’s use of the color purple. Although a settlement has been reached and Nestlé is no longer a party to the proceedings, the High Court decided to hear Cadbury’s appeal. Mr Justice Meade agreed with the assessment of the UKIPO Comptroller General of Patents, Designs and Trademarks, who intervened, that the case raised an area of ​​law “uncertain and of some importance” .

The new judgment

Cadbury’s appeal regarding the ‘361 claim was unsuccessful. Judge Meade agreed with the UKIPO Hearing Officer who originally considered Nestlé’s opposition that the claim suffered from the same potential for multiplicity of forms as the mark that was at the center of the Court’s 2013 judgment call. Indeed, it made no reference to the degree and where the purple color would be applied on the packaging.

Judge Meade was of the opinion that the wording of the ‘361 application was “worse than that rejected by the Court of Appeal”. He said: ‘Removing language retained by the Court of Appeal to let in multiple forms and be objectionably ambiguous is cosmetic at best and unhelpful. It preserves all the practical issues of scope and adds more.

However, the judge accepted Cadbury’s appeal regarding the ‘822 claim. The Hearing Officer objected to this request on the grounds that the manner in which the color was to be used, for example on packaging, advertising media or applied to the goods themselves, had not been specified in the request . However, Judge Meade said it was not necessary to specify in the application how and where the mark would be used.

According to the judge, the use of color was the use of the sign, whether used on goods, packaging, commercial documents or elsewhere. The sign was not different from one context to another. He held that if the Hearing Officer’s interpretation of No. 822 was correct, it would mean that a color mark as such could only be validly registered if it was limited to a single mode of use. He said this approach would be inconsistent with judgments of European courts, which have each confirmed that a color by itself “without outlines” can constitute a valid “sign” and therefore a registrable mark.

Judge Meade added that while the wording as “predominant” at the heart of the Court of Appeal’s 2013 decision allowed for ambiguity around what the mark actually was, a single color sign did not. not. He also said he struggled to see why the ruling on the ‘822 application “wouldn’t apply, at least, to all consumer goods.” This suggests that its decision on color marks per se is intended to create a precedent that would apply in a broader context than the present case.

A useful checklist for businesses

This judgment shows that it is possible to register colors as marks. However, it stresses the need for applicants for color marks to ensure that the mark they wish to register has a clear specificity by indicating how the color is applied to the goods in question.

Judge Meade helpfully set out a checklist for color mark applicants in his judgment. Companies that follow the checklist will have the best chance of success with color mark registration applications:

  • An application for registration of a color mark must: consist of a sign; be capable of graphical representation; and being able to distinguish the goods or services of one business from those of other businesses.
  • Applicants should avoid a description or representation of a color mark that could be construed as protecting various different appearances. This potential for a multitude of forms risks giving the owner of a mark an unfair competitive advantage over its competitors and is therefore likely to be an obstacle to the registration of the mark.
  • The mark applied for must meet the requirements of clarity, intelligibility, specificity, precision, accessibility, uniformity, autonomy and objectivity.
  • Colors are usually a means of decorating things and are not normally capable of being a “sign”. A sign conveys a message and therefore a color based on a sign can only be registered as a mark if it conveys such a message about the origin of the goods or services.
  • Depending on the facts and circumstances of the case, the colors, or combinations of colors, designated in an abstract manner and without contours and used in connection with a product or a service, are likely to be a “sign”.
  • In a mark consisting of two or more colors designated in the abstract and without outlines, the representation of the mark must be precise and the colors arranged in a predetermined and uniform manner.
  • The inclusion of a recognized color reference in the trademark application, such as a Pantone or RAL number, is critical to the likelihood of the application being successful. However, color coding alone may not be sufficient to overcome potential gaps in wording describing color placement.
  • A clear and precise definition of how the color will be used is therefore imperative, even if this description extends to the entire surface of a product.

A version of this article was first published by International Law Office.

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