Cadbury: the Purple Reign is over

In 1995, more than two decades ago, Cadbury commenced its journey to claim the sole right use of the colour purple, more specifically Pantone 2685C, the colour used for its chocolate bar wrappers.

In December 2018, Cadbury lost an appeal which would have protected its 1995 trademark registration, and thus, for the first time, Cadbury has to use its unregistered rights to stop third parties from making use of the same purple hue.

Back in 1995, Cadbury had registered a trademark for the colour purple (Pantone 2685C) only for “chocolate in bar or tablet form” and consequently, in 2004, Cadbury pursued a new trademark registration to ensure its drinking chocolates and broader chocolate range could legally monopolise its trademark colour purple by having its description read that the colour purple “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”.

Nestlé opposed the application with the UK Intellectual Property Office stating that the colour purple had no distinctive character and that it was too broad for a range of goods. The UK Intellectual Property Office dismissed Nestlé’s claim that the colour was not distinctive to Cadbury, however it limited the amount of good covered by the said trademark. Nestlé took the case to the UK High Court, which also dismissed Nestlé’s claim, however, the UK High Court was again diluted to cover only milk chocolate as the colour purple lacked identity to Cadbury for dark, white and plain chocolate. Nestlé’s last hope was taking the case to the UK Court of Appeal. The UK Court of Appeal agreed with Nestlé’s claims and found issue with the wording “being the predominant colour applied to the whole visible surface, of the packaging of the goods” as it stated that “predominant” was too broad. Therefore, the UK Court of Appeal ruled in Nestlé’s favour, rejecting Cadbury’s application.

Noting that the decision taken by the UK Court of Appeal could apply to Cadbury’s existing 1995 trademark application, since the trademark description had similar wording, Cadbury initiated an action with the UK Intellectual Property Office to amend the description and delete the phrasing “being the predominant colour applied to the whole visible surface”, which following oppositions by Nestlé, the UK Court of Appeal rejected Cadbury’s request to make any amendments.

In view of this, Cadbury had two options, either to drop the current registered trademark or apply for a fresh trademark. Cadbury eventually dropped its 1995 trademark, which had similar wording to the 2004 trademark application leaving Cadbury vulnerable in protecting its distinctive trademark colour purple as safeguards may now only take place through unregistered rights.

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