Cadbury UK Ltd v The Comptroller General of Patents Designs And Trade Marks

Whether a registered entry contains a single mark or a series is determined by construing the entry on the register as a whole. Alternative wording does not create separate marks where one alternative encompasses every conceivable presentation of the sign. A series under the Trade Marks Act 1994 requires separately identifiable marks that resemble each other in material particulars and differ only in non-distinctive matters that do not substantially affect identity. A colour mark must also be represented with clarity and precision. Where the entry is a single mark, section 44 prevents alteration during registration, subject to its limited exceptions. A defective description cannot be recharacterised as a series to enable deletion under rule 28(5).

Cadbury owned registered trade mark 2020876A for a purple colour applied to packaging. Its description covered purple applied to the whole visible surface or being the predominant colour applied to the whole visible surface. After the Court of Appeal rejected the same wording in Cadbury’s later application in Société des Produits Nestlé SA v Cadbury UK Limited [2013] EWCA Civ 1174, Cadbury asked the registrar to treat the registration as a series and delete the predominant-colour wording.

The hearing officer refused the application, and the deputy High Court judge dismissed Cadbury’s appeal in [2016] EWHC 796 (Ch). The central issue was whether the register recorded a single imprecise mark or a series of marks, and whether rule 28(5) permitted deletion of part of the entry.

The appeal was dismissed. Lord Justice Floyd gave the leading judgment, with Lord Justices Henderson and Baker agreeing.

1. Construction of the registration. The decisive question was how the particular entry appeared on the register, namely whether it recorded one mark with an imprecise description or two or more marks forming a series. The absence of a series indication on Form TM3 was not by itself determinative. Nor was the power to delete a mark from a series confined to marks which were validly registered. Those points did not resolve the proper construction of the entry.
2. Meaning of the alternatives. The description began by presenting the subject as one colour mark. The word “or” did not create two separate marks. The whole-surface wording was merely one extreme of the range covered by the predominant-colour wording. The latter encompassed every conceivable case in which purple predominated, including cases where no other colour was visible. An informed reader would therefore understand the alternatives as a generalised but imprecise description of a single mark.
3. Series requirements. Under section 41(2) of the Trade Marks Act 1994, marks in a series must resemble one another in their material particulars. Differences must be non-distinctive and must not substantially affect visual, aural or conceptual identity. The predominant-colour wording could cover stripes, spots, a central blob and other materially different presentations. It could not satisfy the statutory test. The analysis in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455 supported that conclusion.
4. Clarity and precision. The colour-mark authorities, including Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-3793, Heidelberger Bauchemie GmbH [2004] ECR I-6129 and Dyson Ltd [2017] ECR I-687, demonstrated the need for a clear and precise representation of a sign. The lack of clarity could not instead be treated as an attempt to register an unknown number of marks.
5. Consequence. The registration was a single mark and therefore could not be altered under section 44(1) by deleting the predominant-colour wording. The only statutory mechanism for holding multiple marks under one registration was a series registration under section 41. Cadbury’s appeal was dismissed.

1. Court of Appeal (Civil Division): Cadbury’s appeal was dismissed.
2. High Court of Justice, Chancery Division: the deputy High Court judge dismissed Cadbury’s appeal from the registrar’s decision; [2016] EWHC 796 (Ch).
3. Registrar of Trade Marks: a hearing officer refused Cadbury’s application to delete the predominant-colour wording.