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

A colour may constitute a trade mark only if the application identifies a single sign and represents it graphically with clarity, precision, self-containment, accessibility, intelligibility, durability and objectivity. A description covering a specified colour either on the whole surface of packaging or as its “predominant” colour fails those requirements. Predominance introduces unspecified colours and visual material, producing an unknown number of possible signs rather than one ascertainable sign.

Acquired distinctiveness does not cure a failure to satisfy these threshold requirements. The register must enable registration authorities and competitors to determine both what falls within the mark and what falls outside it.

Cadbury applied to register the colour purple, Pantone 2685C, for specified chocolate products. The application described the colour as applied to the whole visible surface, or as the predominant colour applied to the whole visible surface, of the goods’ packaging. The Principal Hearing Officer accepted the application after amending the goods specification.

HHJ Birss QC dismissed Nestlé’s appeal on whether the subject matter was a sign capable of graphic representation, although he further narrowed the goods specification: [2012] EWHC 2637 (Ch). Nestlé appealed. The central question was whether the alternative reference to a “predominant” colour identified a single sign and represented it with the certainty required by article 2 of the Trade Marks Directive 2008/95/EC.

1. Appeal allowed unanimously. The Hearing Officer and the judge had misinterpreted the verbal description accompanying the colour sample. Sir John Mummery gave the leading judgment. Sir Timothy Lloyd agreed and gave additional reasons; Lewison LJ agreed with both judgments.

2. Article 2 of the Trade Marks Directive 2008/95/EC requires a registrable mark to be a sign, to be capable of graphic representation and to be capable of distinguishing one undertaking’s goods or services from another’s. Its identification must possess clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity. These requirements protect the certainty and fairness of the public register and prevent unfair competitive advantage.

3. The application was not confined to the unchanging use of Pantone 2685C over the whole visible surface of the packaging. Its alternative reference to purple as the “predominant” colour necessarily introduced other colours and visual material which the application neither displayed nor described. It therefore covered a multitude of permutations, presentations and appearances. The Registrar and competitors could not ascertain the registration’s full scope.

4. The application consequently failed both the sign and graphic-representation requirements. It sought protection for an unknown number of signs rather than one sign conveying a message. The description lacked the required clarity, precision, self-containment, durability and objectivity. Its uncertainty would also confer an unfair advantage on Cadbury and disadvantage competitors.

5. Sir Timothy Lloyd added that Libertel established necessary conditions for registering a colour mark, rather than a rule that satisfaction of those conditions would invariably make the colour registrable. The term “predominant” was subjective and imprecise. It might refer to surface area, visual strength, position or prominence. Existing UK Intellectual Property Office guidance permitting that formulation might therefore require reconsideration in individual cases.

6. The Court could decide the appeal without a reference under article 267 of the Treaty for the Functioning of the European Union. The CJEU had already explained article 2 with sufficient clarity and detail.

1. Court of Appeal (Civil Division): allowed Nestlé’s appeal unanimously, holding that the application did not identify or graphically represent a single sign: [2013] EWCA Civ 1174 .
2. High Court, Chancery Division: HHJ Birss QC dismissed Nestlé’s appeal on the sign and graphic-representation issues, but narrowed the specification of goods: [2012] EWHC 2637 (Ch) .
3. Registrar of Trade Marks: the Principal Hearing Officer rejected Nestlé’s opposition and accepted Cadbury’s application with an amended specification of goods.