Cadbury leaves Court of Appeal purple faced after colour registration defeat

17 Dec 2018

Trade marks are a valuable asset and brand tool for businesses of all sizes: a good trade mark enables a business within a particular industry to stand apart from its competitors. Once registered, a trade mark offers protection to a business’ brand with exclusive use of that mark and the option to take enforcement action should the protected mark be used without permission. Such are the value and importance of a trade mark, many businesses are testing the limits of what can be registered and protected and what cannot.

One example is Cadbury, one of the world’s largest confectionary brands, which has been in a long running dispute over the registration of the particular colour of purple that appears on Cadbury’s products as a trade mark.  The latest development is that Cadbury – which has used the colour since 1905 - has lost its appeal to have the description for the colour of the mark changed which essentially would have widened its existing trademark of the colour to use in any form. This followed a previous defeat for Cadbury in registering the colour where it was found that the trade mark did not fulfil the basic characteristics that a mark needs to have in order to be registered as a trade mark as set out in s.1(1) of the Trade Mark Act 1994 – namely, being able to be graphically represented and capable of distinguishing goods and services.

The most recent appeal concerned changing the initial description that did not conform to the Trade Mark Act to a different, more complex, description that Cadbury and its advisers asserted met the criteria to be registered as a trade mark.

The change to the description was denied by the Court of Appeal. The reason behind the refusal was that allowing the description and the colour to be registered that this might effectively be allowing more than one trade mark to be registered.

It was found that an application for a trade mark must clearly set out the monopoly that is sought with the registration; giving a detailed description that can apply to a range of products and services will not be allowed.

This case shows how important trade marks are to businesses. Cadbury has attempted to push the boundaries of what can be registered and protected as a trade mark, and clearly assigns extraordinary value in registering the colour purple that appears on its packaging as demonstrated by its pursuit of the registration over a significant period of time.

Trade marks are an asset of a business that should not be ignored. There is value in almost all trade marks, and steps should be taken to protect them.

If you require any advice on the registration of a trade mark, or about enforcing rights that you may have already obtained from registering a mark then please contact us for an initial discussion on how we may be able to help you.

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