The UK Court of Appeal overturned an October 2012 ruling by the High Court to grant Cadbury UK exclusive use of the colour – known as Pantone 2865c – after it was challenged by Nestlé.
Cadbury, which has been using the distinctive shade of purple since 1905, sparked the long-running feud in 2008 when it attempted to apply for a colour trademark. The Court of Appeal said the trademark application does not “comply with the requirements for [trademark] registration”. It lacked the “required clarity, precision, self containment, durability and objectivity to qualify for registration”, added the UK Court.
A spokesman for Cadbury owner Mondelez International, says it is disappointed with the decision. The chocolate maker is studying the ruling and will consider whether to appeal, the spokesman adds. The trademark application will go through to the European Court if Cadbury decide to appeal.
The spokesman says: “It is important to point out that it does not affect our long held right to protect our distinctive colour purple from others seeking to pass off their products as Cadbury chocolate. Our colour purple has been linked with Cadbury for a century and the British public has grown up understanding its link with our chocolate.”
The ruling was welcomed by Nestlé claiming it is the “right outcome from a legal perspective”.
Legal experts say the UK Court’s decision is a warning sign to marketers that protecting use of colour as a part of a brand’s identity “just got harder”.
Fiona McBride, partner and trade mark attorney at Withers & Rogers, says brand owners will need to think “carefully” about how they can represent the colour graphically moving forward. The public “need clarity over the rights given”, she adds.
McBride says: “Seeking colour protection has never been easy or straightforward – it is necessary to demonstrate that consistent use of a specific colour over a period of time has led to it becoming recognised as synonymous with the brand. With a heritage dating back to the 1920s, Cadbury had hoped that it had been using the colour purple for long enough.”
The decision follows one from earlier this year that saw Cadbury foil Nestlé’s attempts to trademark the shape of the four-finger KitKat chocolate bar in the UK. The intellectual Property Office upheld Cadbury’s opposition to Nestlé’s national trademark application. It jars with the latest EU ruling, however, which adjudged the four-finger shape to be exclusively associated with Nestlé’s brand.