Case Analysis: Nestlé v Cadbury

• Published date: 19 July 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Law Firm: Dehns
• Author: Mr Paul Harris

Cadbury finally hits a purple patch

Summary

The fight over use of the colour purple is, perhaps, one of the more hotly contested colour battles. It is not, however, restricted only to a couple of businesses in a single field (Glaxo and Sandoz fought over it in relation to inhalers). Nevertheless, in the minds of trade mark practitioners, it is more usually associated with Cadbury trying to obtain registrations, with Nestlé opposing (no doubt in retaliation for Cadbury doing the same (and successfully) in relation to the 3D mark for KIT KAT chocolate bars).

Seeking to dominate a specific single colour has been a contentious approach and few have successfully achieved this. This, however, is primarily because of the scope of the description in the trade mark application, not because such marks are unacceptable in terms of the case law: Libertel Groep BV v Benelux-Merkenbureau Case C-104/01 deciding it was possible subject to certain criteria being fulfilled.

Could Cadbury finally manage to draft a specification which would avoid the problems identified by the case law, and overcome the objections of others?

Société des Produits Nestlé v Cadbury UK Ltd (Comptroller-General of Patents intervening) [2022] EWHC 1671 (Ch)

Case background

Following the handing down of a decision in the UKIPO over yet more applications by Cadbury, in which one application finally overcame opposition, Cadbury and Nestlé sought a truce and settled their purple mark differences. However, Cadbury still sought to appeal the decision by the hearing officer to reject the other two applications.

The goods for each mark were identical and were essentially milk chocolate and drinking chocolate in Class 30. The three marks in issue all had the same coloured square in the box for showing what the mark applied for looked like, but were distinguished by their individual descriptions. These were:

1. Application No 3 019 362: Mark description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.
2. Application No 3 019 361: Mark description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods
3. Application No 3 025 822: Mark description: The colour purple (Pantone 2685C), shown on the form of application.

Mark '362 was the one the hearing officer considered acceptable in her decision. She upheld the oppositions for '361 and '822.

In considering the state of the...