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

A colour mark must identify a single sign and be represented with sufficient clarity, precision, accessibility, intelligibility, durability and objectivity. A description which leaves the extent or manner of application uncertain may encompass a multitude of different signs and is invalid. A colour per se mark designated by an internationally recognised code is conceptually a single sign. It does not require a limitation to one particular mode of use merely to qualify as a sign. The validity of each application depends on its precise wording: an unspecified application of colour to packaging was invalid, whereas a coded colour mark without contours or a specified mode of use was capable of being a sign.

This was an appeal by Cadbury against a decision of the Hearing Officer in Nestlé’s opposition to three applications for the colour purple in class 30. The opposition under sections 3(1)(a) and 1(1) of the Trade Marks Act 1994 succeeded against two marks and failed against one. Nestlé did not participate in the appeal, having settled its wider dispute with Cadbury. The Comptroller-General intervened because of the wider uncertainty concerning colour marks.

The appeal concerned whether a mark describing purple as applied to packaging without specifying the extent of application was sufficiently defined, and whether a colour per se mark designated by Pantone reference could constitute a sign.

1. The appeal succeeded in relation to application ‘822 and failed in relation to application ‘361. The parties were directed to agree an appropriate order.

2. The court adopted the relevant principles identified in Société des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174, subject to the binding effect of that decision. An application must contain a sign, be capable of graphic representation and be capable of distinguishing the goods or services of one undertaking from those of others. The representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

3. A description using terms such as predominant may encompass an unknown number of visual forms, because the other colours or material over which the relevant colour predominates are unspecified. That lack of certainty creates problems for the register and competitors and may confer an unfair competitive advantage.

4. Application ‘361 was invalid. Removing the wording previously identified as problematic did not cure the defect. The description remained wholly unspecified as to the extent of purple on the packaging and was capable of covering multiple forms.

5. Application ‘822 was capable of being a sign. A colour per se mark designated by Pantone reference is conceptually one thing: the colour itself. The same sign may be used on packaging, documents, advertising or goods. Use in different contexts does not create different signs, and a colour per se mark need not be limited to a single manner of use.

6. The court did not decide the distinctiveness issue under section 3(1)(b), nor did it give categorical guidance on infringement or the identity of colour marks. It noted that a colour mark may specify its manner of application if that specification is unambiguous and sufficiently precise.

• High Court (Chancery Division): appeal from the Hearing Officer’s decision of 12 April 2019. The appeal succeeded for application ‘822 and failed for application ‘361.