Say “chocolate” and Cadbury’s purple comes to mind — a colour it has used since 1905 and fought decades to own. Then it lost, undone by a single word in its own description: “predominant.” A cautionary tale on defining a colour mark.
The case
In 1995, Cadbury applied to register the colour Pantone 2685C for chocolate in bar/tablet form, describing the mark as “the colour Purple (Pantone 2685C)… applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging.”
Wanting to extend the colour mark to cakes and drinking chocolate, Cadbury filed a new application in 2004. Nestlé opposed, arguing the colour mark was not distinctive and too broad for a range of goods.
The ruling
In October 2013, the UK Court of Appeal upheld Nestlé’s opposition and rejected the 2004 application — the description was inadequate, the word “predominantly” too broad and ambiguous.
Worse for Cadbury: since its 1995 registration used the same description, that earlier registration looked invalidly registered too. To salvage it, Cadbury argued the 1995 registration was really a series of two marks (under Section 41, UK Trade Marks Act 1994):
- purple applied to the whole visible surface; and
- purple as the predominant colour on the surface.
It sought to delete the second (the problematic one). But the Court refused — the Registrar had allowed a single mark, not a series of two.
The consequence
The loss opened the way for rivals to use purple on their own chocolates. Cadbury technically still holds a valid mark, but the word “predominantly” leaves it in a precarious position.
The real lesson
The case — with Cadbury’s earlier litigation — underscores that non-conventional marks (colour, sound, smell) must be defined clearly and precisely. Colours like red for fire, green for nature, blue for water aren’t distinctive — a layman links them naturally to the thing. But this shade of purple has no natural link to chocolate, so (in this author’s view) it is distinctive — which makes Nestlé’s “not distinctive, too broad” argument worth questioning. Either way, the imprecise description is what sank it.
The takeaways
- Define colour marks with precision. Vague words like “predominant” invite invalidity.
- A single mark isn’t a series. You can’t retroactively split one registration to save it.
- Non-conventional marks demand extra care — colour, sound and smell marks live or die by their description.
- Distinctiveness alone won’t rescue a badly-drafted mark — the wording must be exact.
Frequently asked questions
Can a single colour be registered as a trademark? Yes, where it’s distinctive and precisely described — but a colour naturally associated with the goods (or a vaguely defined one) will struggle, as Cadbury’s purple did.
Why did Cadbury lose its purple trademark fight? The UK Court of Appeal held the description — using “predominant” colour — was too broad and ambiguous, making the mark inadequately defined.
What’s the lesson for colour and sound marks? Define them clearly and precisely; non-conventional marks are especially vulnerable to invalidity if their description is vague.
Could Cadbury save its 1995 registration as a series of marks? No — the court held it was registered as a single mark, not a series, so Cadbury couldn’t delete the problematic “predominant” limb.
Legislation referred to
- The Trade Marks Act, 1999