Cadbury has lost its Supreme Court battle to register as a trade mark its iconic colour purple (known as Pantone 2685C), ending a 10-year legal battle between Cadbury and its competitor Nestlé. The UK Supreme Court has refused Cadbury’s application to appeal against an October 2013 Court of Appeal decision which ruled in Nestlé’s favour, meaning that Cadbury has now exhausted all possible avenues of appeal in the UK.
Cadbury first filed a UK trade mark application for the purple shade in 2004. The application was allowed and published in the Trade Marks Journal in 2008 but could not be registered due to opposition raised by Nestlé. This set into motion a chain of lengthy proceedings. First, the UK’s Intellectual Property Office (IPO) dismissed Nestlé’s claims that the colour was not distinctive to Cadbury. Nestlé then took the case to the High Court. Despite limiting the category of goods covered by the trade mark application to milk chocolate only, the High Court dismissed Nestlé’s claim on the basis that Cadbury was able to show that that mark had acquired a distinctive character over the 100 years it had been using the shade.
Nestlé continued the case to the Court of Appeal where ruling was finally made in its favour. The Court of Appeal considered that Cadbury’s application for registration did not sufficiently define its rights to the colour and that the application amounted to an attempt to register ‘multiple signs’. Cadbury filed an application to the Supreme Court to appeal the Court of Appeal’s ruling but the court determined that Cadbury’s application to appeal did not raise an arguable point of law and would give an unfair competitive advantage to Cadbury without the required clarity, objectivity and precision needed for a trade mark.
Cadbury has confirmed that there are no further avenues for appeal but this is certainly not the end of Cadbury’s efforts to protect its brand. Cadbury may choose to file new trade mark applications which more clearly define Cadbury’s alleged rights to the colour purple in order to overcome the Court of Appeal’s concerns about Cadbury’s original imprecise definition of rights. Aside from formal trade mark registration, Cadbury may still be able to rely on the common law principle of ‘passing off’ to stop competitors from using the colour purple when applied to the packaging of milk chocolate products.