Cadbury’s has been allowed to register a trademark for the particular purple colour used on its chocolate bar wrappers, after a High Court ruling this week.
Lawyers representing Cadbury, Charles Russell Speechlys, said Cadbury’s would now be able to register the colour (Pantone 2685C).
The confectionery giant has been attempting to register the colour for several years, in particular to register it without reference to how it will be used and just the colour per se.
In the past, it has locked heads with Nestlé, with the UK intellectual property office (IPO) invalidating two of Cadbury’s trademarks for the purple colour in 2019.
However, this week, Justice Meade said that “if Cadbury’s circumstances are not right, I do not see how any other applicant would do better,” with regards to registering the colour.
The decision means that brands are capable of registering a colour, as an abstract thing, as it can be a ‘sign’ as required by the UK Trade Marks Act.
“There is now clear guidance for the UK IPO that these marks are registerable in principle and can be registered if the applicant is able to meet the ‘acquired distinctiveness’ test,” Mary Bagnall, Charles Russell Speechlys partner, said.
She added: “This decision does not open the floodgates for the registration of colour per se marks, which will remain difficult to obtain because of the need to provide compelling evidence of ‘acquired distinctiveness’ in the mind of the consumer, something that Cadbury was able to achieve having used Cadbury Purple as a brand for over a century”.
The decision is the latest in a protracted battle to secure rights over the colour.
In 2019, Cadbury’s lost an appeal that would have protected a trademark secured in 1995, meaning it was harder to prevent rivals using a similar colour.
The chocolatier was victorious in 2012 when it won a case to prevent other chocolate firms using the colour. However, this was challenged by Nestle, who won an appeal in 2013.
In 2013, the Court of Appeal said the trademark application lacked “the required clarity, precision, self-containment, durability and objectivity to qualify for registration”.
Kate Swaine, intellectual property partner at the law firm Gowling WLG said: “This is the latest in the ongoing battle over the colour purple. The Court concluded that Cadbury’s mark registered for the colour purple (Pantone 2685C) ‘applied to the packaging of the goods’ was invalid as the scope of the right was unclear but it stated that a mark registered for the same colour without any reference to the packaging of the goods at all, was valid.
She added: “Securing a colour mark remains challenging given the need for distinctiveness but this decision will be well received by those brand owners who regard colour as a key element of their brand identity.”