Colour me purple: Cadbury UK Ltd v Comptroller General of Patents, Designs and Trade Marks [2018] EWCA Civ 2715

The well-known confectionary brand Cadbury UK, has been using the iconic colour purple for nearly 100 years. Cadbury UK have been involved in many legal battles regarding registering the trade marks for this famous colour. In its latest legal dispute, the Court of Appeal examines Cadbury’s trade mark history relating to its purple mark and reaffirms what constitutes a series of marks.  

The case involved the Appellant (‘Cadbury UK’) appealing against a decision of the Comptroller General of Patents, Designs and Trade Marks (‘Comptroller General’), who refused to alter Cadbury UK’s trade mark (‘the 876 mark’) by deleting part of its description.

Cadbury original registered its purple mark in 1995 but failed to indicate whether this was for a series of trade marks; it failed to specify this on the TM3 form (form used to file an application for a trade mark). In 1998, Cadbury UK later registered the 876 mark with the below clarification:

“The mark consists of 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.’

In June 2014, Cadbury UK wrote to the registrar stating that the 876 mark ‘…sets out a series of two marks, as is permissible under s.41 of the Act [Trade Mark Act 1994], implemented by Rule 28 of the Trade Mark Rules.’

The Law under the Trade Mark Act 1994

Section 41 subsection 2 sets out the relevant rules that constitutes a series of marks. It states the following:

(2) A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.

(3) Rules under this section may include provision as to—

(a)the circumstances in which, and conditions subject to which, division, merger or registration of a series is permitted, and

(b)the purposes for which an application to which the rules apply is to be treated as a single application and those for which it is to be treated as a number of separate applications.

Section 44 sets out the relevant rules that govern the alteration of trade marks. It states the following:

Alteration of registered trade mark.

(1)A registered trade mark shall not be altered in the register, during the period of registration or on renewal.

(2) Nevertheless, the registrar may, at the request of the proprietor, allow the alteration of a registered trade mark where the mark includes the proprietor’s name or address and the alteration is limited to alteration of that name or address and does not substantially affect the identity of the mark.

(3) Provision shall be made by rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.

Due to the above, Cadbury UK would have been prohibited from altering their trade mark to further clarify or change the 876 mark. Instead Cadbury UK chose to argue that the 876 mark that it registered was a series of marks. Cadbury was prompted to do this as a result of its previous legal dispute with Nestlé (competitor brand) over another trade mark for the same purple colour (‘the 879 mark’).  Cadbury UK had ‘…inferred from the Court of Appeal’s analysis that if the predominant colour wording could be removed from the description, leaving only the whole surface wording, the objection found to be established by the Court of Appeal against the 879 mark might be overcome for the 876 mark.’

In October 2014, Cadbury UK’s application to amend the 876 mark was rejected as the registrar did not think it constituted a series of marks. A slew of legal applications and hearings ensued.

In this case, the Court of Appeal found that it had jurisdiction to infer whether a trade mark was registered as a series of marks. However, on a true construction of the 876 mark, the Court could not make a finding that the 876 was meant to be registered as a series of marks. Lord Justice Floyd in the Court of Appeal found that ‘…the reader would conclude that the 876 registration was an attempt to register a single mark which falls foul of the requirements of clarity and precision.’.Consequently, the 876 mark did not constitute a series of marks and the 876 mark could not be amended.

By Fatima Amedu