Trade marks: colour marks and series marks

Background

The Court of Appeal has held that where the language of the description of  a trade mark extended to cases where the colour purple was applied  to the whole visible surface of the packaging of goods, as well as to cases where purple is the predominant colour applied,  this did not define a sign within the meaning of section 1(1) of the Trade Marks Act 1994 (1994 Act) and was invalid (Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174).

A series of marks is a bundle of marks under a single reference number and each of those marks must resemble each other (Comic Enterprises Ltd v Twentieth Century Fox Film Corporation, www.practicallaw.com/2-630-2180).

Facts

C owned a trade mark which comprised a representation of the colour purple together with the description that it consisted of the colour purple applied to the whole visible surface,, or being the predominant colour applied,  to the whole visible surface, of the packaging of goods.

Following Nestle v Cadbury, C applied to amend the description of the mark by deleting the predominant colour wording. C argued that, in Nestle v Cadbury , the Court of Appeal had noted that it might be possible to remove the predominant colour wording from the description, and leave only the whole surface wording.

The registrar refused C's request on three grounds: it had not applied for a series mark at the time of registration; there was no mark to be deleted because the words in the registration did not describe a trade mark; and any deletion amounted to an alteration not permitted under the 1994 Act. C appealed.

The High Court dismissed the appeal. C appealed, arguing that the mark consisted of two alternative descriptions: the purple colour applied to the whole visible surface of the packaging (the whole surface wording); and the purple colour being the predominant colour applied to the whole visible surface of the packaging (the predominant colour wording).

Decision

The court dismissed the appeal.

The court did not accept C's argument that there were two marks. The use of the word "or" was not enough to dissuade the court from the conclusion that the description referred to a range. Taking both parts of the description and reading the description as a whole, what was being described was every conceivable case where purple was the predominant colour, including the case where no other colour was visible. The various alternatives covered by the description were not intended to identify separate marks, but were parts of a generalised but unacceptably imprecise description of a single mark. The reader of the description of the mark would struggle to find any other representation complying with the 1994 Act. This militated against any inference that the registrar had exercised his power under section 41 of the 1994 Act to register a series of marks.

Also, even accepting the whole surface wording to be clear, the reader would consider that the predominant colour wording inevitably covered representations that differed materially and that created a different identity. Therefore, no series of marks had been defined.

Comment

This is the latest battle in the chocolate wars in which C has tried to protect the colour purple for its chocolate products. The sole condition that purple is the predominant colour would inevitably cover a very wide range of marks many of which would not resemble each other or have substantially the same visual identity. In order to be registrable, the extent of the monopoly claimed must be clearly defined and not capable of multiple interpretations. This is especially so with colour or shape marks which seek to grant a monopoly to a trader in respect of a particular colour or shape. 

Case: Cadbury UK Ltd v Comptroller General of Patents Designs and Trade Marks [2018] EWCA Civ 2715.

First published in the January/February issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.