Société des Produits Nestlé S.A. v Cadbury UK Limited

A pure colour mark, properly defined by words and an internationally recognised colour code, is capable in principle of being a sign capable of graphical representation. Whether it satisfies the statutory requirements depends on the context and evidence. Wording that identifies the colour as predominant on packaging does not necessarily convert a single-colour mark into a combination mark or create impermissible uncertainty. The specification of goods must nevertheless be supported by evidence of acquired distinctiveness for the goods covered. Evidence of use on milk chocolate did not justify registration for chocolate generally, but supported registration for milk chocolate. The appeal was therefore allowed only to narrow the specification.

Cadbury applied to register Pantone 2685C purple for specified chocolate and cocoa-related goods. The Registrar accepted the application after finding acquired distinctiveness for some categories and amended the specification. Nestlé appealed to the High Court under Trade Marks Act 1994, contending principally that the mark was not a sign capable of graphical representation. It also challenged the breadth and clarity of the specification, including the inclusion of plain, dark and white chocolate and the expression chocolate for eating. The central issues were whether the application satisfied the requirements corresponding to article 2 of the Trade Mark Directive and whether the evidence justified the goods specification.

1. The appeal was dismissed on the principal registration issue but allowed to the extent that the specification covered chocolate generally rather than milk chocolate. The specification was ordered to be amended to: milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate.

2. Section 1(1) and section 3(1)(a) of the Trade Marks Act 1994 require a mark to be a sign capable of graphical representation and capable of distinguishing the goods of one undertaking from those of others. The CJEU authorities, particularly Libertel Groep BV v Benelux-Merkenbureau Case C-104/01, establish that a colour per se is capable in principle of satisfying those requirements. Whether it does so in a particular case depends on the context.

3. Heidelberger Bauchemie Case C-49/02 and Dyson v Registrar of Trade Marks Case C-321/03 concerned indeterminate combinations or multiple possible forms. They did not alter the rule in Libertel Groep BV v Benelux-Merkenbureau. The wording identifying purple as applied to the whole visible surface, or as the predominant colour applied to it, described a use of one colour. It did not create a colour-combination mark requiring systematic spatial arrangement. The word predominant introduced no unacceptable uncertainty beyond that inherent in trade mark registration.

4. The appellate court should show real reluctance to interfere with a hearing officer’s decision absent a distinct and material error of principle or clear wrongness, particularly in nuanced evaluations of evidence. The Registrar’s findings on distinctiveness and evidence of third-party use were not shown to involve such an error.

5. Evidence supported acquired distinctiveness for milk chocolate, but the Registrar had not considered whether evidence based solely on milk chocolate justified extending the finding to plain or white chocolate. The public interest in avoiding an excessive monopoly in colours meant that registration for chocolate generally was too broad. The expression chocolate for eating was sufficiently clear and did not impermissibly extend the original specification; it referred to chocolate itself rather than blended chocolate confectionery.

• High Court (Chancery Division): On appeal from the Trade Marks Registry decision, the court dismissed the challenge to registrability and allowed the appeal only as to the breadth of the goods specification.