Nestle vs Cadbury – The Purple Debate

In the year 2004 Cadbury applied to register the shade of the color purple known as Pantone 2685C as a trademark in relation to goods which fall under the Intellectual Property Office’s class 30. Their application for the registration declared that the trademark would be the colour “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”

Nestlé disagreed with the same on the grounds that the colour was not suited of being potrayed graphically and therefore did not comply with Article 2 of the Trade Marks Directive 2008/95/E

Subsequently an Intellectual Property Office hearing and a High Court decision which granted the trademark to remain registered, the Court of Appeal finally found in Nestlé’s support on 4 October 2013.

The judge went on to consider the classic four judgments of the Court of Justice of the European Union (CJEU) on “exotic” trade marks (smells, colors per se and ‘other things’).

In Libertel v Benelux, the CJEU considered whether a Dutch telecommunications company could register the color orange for telecoms goods and services. Contrary to the Advocate General’s opinion, the court held that a color per se, which is not bound by any shape or outline, is capable of being registered as a trade mark. However, to satisfy the conditions of Article 2 of the Trade Mark Directive (i.e. Section 1(1) of the Trade Marks Act), the color must also be a sign capable of distinguishing the goods/services of one undertaking from another.

In Sieckmann v Deutches, the CJEU addressed wither the smell of cinnamon (ethyl cinnamate) could be registered as a mark. The Court held that smell could be a sign under Article 2, but it must also be capable of being represented graphically – which despite the sample and chemical formula, did not satisfy that requirement. The thrust of Seickmann and, later Libertel, was that the requirement for graphical representation necessitated that the mark be described with sufficient clarity, precision intelligibility, objectivity and accessibility so that the scope of the proprietors’ right was clear and certain. A color may constitute a sign (when accompanied with a description in words and a designation of the color using an internationally recognized identification code such as Pantone), but it cannot be presumed to be a sign and much depends on the context in which it is used.

Heidelberger Bauchemie was the third case referenced. In that case, a combination of blue and yellow “in every conceivable form” was considered. Again, as in Libertel, the Advocate General stated that colors without any spatial limitation did not fulfil the requirements of Article 2 as they did not constitute a sign capable of graphic representation but the CJEU disagreed holding that the Court’s decision in Libertel was sound – that colors per se were capable of being a sign. The Court again made clear that the purpose of the graphical representation requirement (clear, precise, intelligible, etc) was to prevent a proprietor who would have an unfair competitive advantage.

The fourth case was Dyson v Registrar of Trade Marks where Dyson sought to register the transparent collection chamber of a vacuum cleaner as a trade mark. The CJEU in Dyson reaffirmed its decisions in Libertel and Heidelberger and held that because the mark was for “all conceivable shapes” of a clear collecting bin, this did not satisfy the requirement that the graphically representation be clear and precise.