• Livin’ La Vida Cocoa – Purple Trademarks for Chocolate

Cadbury’s purple reigns or a purple haze? That is the question.

Cadbury have the following trade mark currently registered:

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.

However, the High Court has declared this registration invalid after a cancellation action brought by Nestle. The court considered the use of the word “predominant” and correctly in our view decided that it meant that a number of possible marks of uncertain scope were covered. The Trade Mark system is intended to have a register that reveals clear rights and this mark offended that principle and so must be struck of the register.

This has led various newspapers to suggest that Cadbury no longer has exclusivity in purple chocolate bars and drinking chocolate.  However, the full picture is not so simple for the three reasons below:

1. Cadbury may appeal the decision , which is not yet final.

2. Cadbury still have over one hundred years goodwill in relation to chocolate bars in purple wrappers and so one would expect them to be able to prevent third parties getting too close to their Pantone 2685C by means of a passing off action.

3. Cadbury have recently filed the three  applications shown below. These are all squares of one colour. Please note that we have not shown the colour derived from the UKIPO website as the shades shown seem to be misleading (e.g. some of the purples look blue). The marks are:

The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.

The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.

The colour purple (Pantone 2685C), shown on the form of application.

We consider that the second mark might be accepted on the basis of acquired distinctiveness for chocolate bars and drinking chocolate and might survive even if Nestle attempt to attack any registration in court or at the UKIPO.

Interestingly Cadbury’s also have the following mark registered:

 

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This is a three-dimensional mark , so the owner is entitled to prevent use of a mark that may be considered similar compared to any one view (left side, from above, etc.).

Kraft used to compete with Cadbury (until they bought the company) with a lilac-wrapped chocolate bar called Milka, and they still have a registration with the offending “predominant” phrase describing the mark. This registration might therefore be vulnerable to cancellation.

Kraft have another registration (this time a European Community one):

purpleLilac/violet, single colour as shown in the representation. The values (specific coordinates in the colour space) for the present mark are : L => 53,58 /- 08 ; A => 15,78 /- 05 ; B => 31,04 /- 05. The mark can be located in Pantone’s Process Book between the shades with number E 176-4 and E 176-3.

Again this might be deemed “unclear” by a court because it is just a square of colour and it is not explained how the colour is applied to packaging or point of sale material etc.

Surprisingly Kraft do not seem to have filed any fresh applications, just in case.

Meanwhile what of Nestle who have the following registration?:

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Note that they have not specified the shades of colour – they are relying on the image alone as scanned in by the UKIPO.

All parties have tolerated the following Community registration for the same goods:

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The owner is Peter Kölln KgaA, who perhaps deserves a prize for managing to come up with a mark that fits between the rocks (there are some almost pure blue marks – but this article is already long enough!) without so far being challenged.

Peter Kölln KgaA  have wisely given a precise definition of the colours used: Purple (“Pantone 2577 C”), dark blue (“Pantone 288 C”).

In conclusion, its not easy is it ? However, we look forward to helping you through the maze of obtaining clear colour rights, should that be appropriate for your marketing plans.

© London IP Ltd 2013.