When we speak “chocolates,” Cadbury’s is the first which springs in our mind. We know that the world-renowned confectionery brand Cadbury has been using the colour Purple to wrap its indiscriminately loved chocolates since 1905. Cadbury battled hard to protect the same.  However, after decades-long battle to own the right to the colour Purple (Pantone 2685C), Cadbury decided to give it up.  

Case Brief

Cadbury in 1995 filed an application to claim rights over the colour mark for the shade Pantone 2685 C. Cadbury’s 1995 (original) application was filed only for chocolates in a bar or tablet form with a description of the colour mark: “The mark consists of the colour Purple (Pantone 2685C) as shown on the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”  

Cadbury wanted to expand its colour mark protection from mere chocolates into the realms of cakes, drinking chocolates and therefore, filed a new application in 2004. Nestle, also a renowned confectionery giant, opposed this application on the grounds that the colour mark (for Purple) is not distinctive and was too broad for a range of goods.  

In October 2013, the United Kingdom Court of Appeal took Nestle’s opposition into consideration and rejected Cadbury’s application on the grounds that the description of the mark was not adequate. The Court found the word “predominately” used in the description too broad and ambiguous. When the decision was made by the Court, Cadbury in no time realized that its existing 1995 United Kingdom registration was invalidly registered, because 1995 application’s description was the same as the 2004 application. In order to avoid a major pitfall, Cadbury submitted before the Court that the existing UK registration was actually for a series of two different marks:  

  1. The colour purple (Pantone 2685C) applied to the whole visible surface of the packaging of the goods.
  2. The colour purple (Pantone 2685C) being the predominant colour applied to the whole visible surface of the packing of the goods. 

Cadbury, therefore, appealed to alter the registered trademark, to remove the second mark which rendered that it was invalidly registered. It was common to treat such registration as a “series” of trademarks registered in accordance with Section 41 of the Trade Marks Act 1994. 

The UK Court in this case, however, did not accept Cadbury’s argument that there were two marks in the 1995 trademark registration. It was held that the Registrar had allowed registration not for a series–consisting of two marks, but as a single mark, as a bigger picture.  

The loss of this case by Cadbury in the Court of Appeal has opened the way for rivals to start using the colour ‘Purple’ for their own chocolates. Although Cadbury still technically has a valid trademark, the use of the word ‘predominantly’ in its description, places Cadbury in a hazardous position. 

Purple and Chocolates

This case, together with the previous Cadbury litigation, brings out the importance of ensuring that trademarks must be clearly and precisely defined, especially for special marks such as sound, colour and smell marks.   

Red for fire or hospital, green for nature, blue for water or sky is not distinctive as a layman can naturally relate the colour with the object/mediums. But in this case, the said shade of purple is nowhere related to chocolates. Therefore, in my humble opinion, I think the said shade of purple for chocolates is distinctive. Thus Nestle’s claim that the trademark, for the shade of purple has no distinctive character and is too broad for a range of goods leaves us thinking…really?