What now for UK colour trademark law?

Julius Stobbs and Savan Bains, Stobbs IP

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Nov 29 2013

The ability to protect colour in trademark law in the UK has been brought into question,
following an October decision at the Court of Appeal in Socit Des Produits Nestl SA v
Cadbury UK Limited. The confectionary giant Cadburys has lost its registration for its
famous colour purple.
Surprisingly, the refusal related to the description defining the colour mark - the same
description that is prescribed by the UK Intellectual Property Office (IPO) itself in its
guidance for the registration of such marks,and which has been used by numerous other
applicants in their registrations:
The colour purple (Pantone 2685C), as shown on the form of application, applied to the
whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.
The court focused on use of the word predominant, holding that it implied coverage of a multitude of different signs and visual
forms, as the word introduced the possibility of other colours and materials being used in combination with the colour purple. The
exact visual presentation of the mark was uncertain, and by covering a wide range of potential marks gave a competitive advantage
to Cadbury and by putting Nestl and its other competitors at a disadvantage. This ambiguity prevented the mark from being
represented graphically, as per the Sieckmann criteria, in a way that is clear, precise, self-contained, easily accessible, durable and
objective; and rendered the mark incompatible with section 3(1)(a) of the Trade Marks Act 1994 (TMA) and also the definition of a
sign in Article 2 of the Trade Mark Directive (implemented by section 1 of the Trade Marks Act 1994).
Where does the Courts reluctance to allow the use of the word predominant as sufficiently specific to define the mark, leave the
protection of colours? This decision has not only resulted in confusion for the registration of new colour marks, but has also
challenged the validity of existing colour marks. Whilst Cadbury made the point after the decision that this does not impact on their
rights in the colour per se, is that right?

New applications for colour marks

It is established law that you can obtain a registration for a colour mark per se, but the issue of whether you can successfully obtain
registrations for colour marks for the packaging of goods is now open for debate. How can the applicant make the mark sufficiently
specific to satisfy this decision?
Guidance from the IPO on the use of the word predominant is no longer useful, but what are the other options? One obvious option
is to stick to a definition which refers to the colour being applied to only the whole visible surface of the packaging of goods. This
definition is acceptable but it is questionable whether it could define a mark precisely, as no packaging entirely constitutes one colour
there is always other relevant material present. As a single colour mark will generally not be regarded as inherently distinctive it will
usually be key for the applicant to show that the mark has acquired a distinctive character. This is only possible on the basis of use
of the mark (see the proviso to s.3 TMA). Regardless of how effective a survey is to show recognition of the mark by the public if
will only assist if recognition has arisen through use. If the applicant cannot use the mark as defined this would preclude registration.
Alternatively, one could determine the definition of the colour mark by reference to its presentation as a percentage of the packaging,
as suggested in the Cadburys decision, applied to the whole visible surface, or to more than 50% of the area of the visible surface,
of the packaging of the goods.
This does not really offer a workable solution, as it is unlikely that a competitor or consumer would understand how much 50% of the
packaging means. According to Advocate General Lger in the Libertel opinion, it should not be necessary to go to inordinate
lengths to ascertain what sign the applicant will actually use. Even if this removes the problem over the definition of predominant,
surely it does nothing to help make the mark sufficiently specific to satisfy the graphic presentation requirements.
The German colour combination case of Aral/Blue, satisfied the graphical representation test by using a ratio value of 50:50 for the
application of colour. Although a ratio could be applied to colour marks for packaging, again the meaning is unclear.
Even if the colour were described as the background used for the packaging, it would be difficult to determine what exactly the
background colour constitutes.
Either way, it is difficult to see how either of these options would assist. In light of the limited options regarding sufficiently precise
descriptions, do we need one at all?

There is no formal requirement, but including a description of a colour mark has been regarded as advisable precisely because it is
felt that an application covering colour alone does not properly define how the mark may look in practice. It seems that there are only
two possible interpretations of an application for a colour without description: first, the mark is vague as it does not precisely and
clearly define the mark. If the word predominant is not precise, how can an application which does not define at all how the colour
may be applied to the goods or other materials relating to the goods be more precise? Second, the mark is conceptually, rather than
visually precise on the basis that it is defined as the colour per se howsoever it is applied. However, in those circumstances how
would an applicant properly show that the mark has acquired distinctiveness? One would have to show that howsoever that colour is
used it is regarded as an indication of origin by the average consumer.
Is this realistic? The IPO guidance on showing acquired distinctiveness for single colour marks suggests a description of the mark so
as to limit the mark, to make it easier to actually show acquired distinctiveness, because in general even the highest profile use of a
colour only educates the public that the colour functions as a trademark when used in a particular way. For example, if Cadbury
applied for the colour per se without a description, would its evidence overcome an absolute grounds objection? In actual fact, it
probably only shows that the colour functions as a trademark when used as the main colour on packaging, rather than when used as
the colour of the product, or the accent colour used in marketing materials. So, this approach may well overcome issues relating to
graphic presentation but in the most part will not help an applicant actually obtain a registration.
The US system seems more able to deal with this issue, and takes a practical approach to the understanding of colour marks for
example in a dispute over the registration for Louboutins lacquered red outsoles for shoesthe Court of Appeal held that although
Louboutin had a valid trademark registration for its distinctive red outsoles, its rights were limited to only those situations in which the
red lacquered outsole contrasts in colour with the rest of the shoe. Louboutins rights were not held to be insufficiently defined, or
invalid, but rather not exclusive, also allowing other traders the right to sell monchromatic red shoes. Whilst not exactly on-point with
the Cadburys issue it shows a practical approach to interpretation of colour rights.
Existing registrations of colour
The status of existing colour registrations both at the IPO and at the Community Trade Mark (CTM) level have also been brought into
question. Famous colour marks such as Whiskas cat food packaging for the colour purple (Pantone 248C), Krafts colour lilac/violet
(between Pantone numbers E 176-4 and E 176-3) for Milka chocolate, and Champagne Veuve Cliquots colour orange for alcoholic
beverages, are, on the basis of this decision, theoretically invalid and could be removed from the Register(s) if challenged.
Indeed most existing CTM registrations for colours use a description of the type employed by Cadbury. If challenged (at least in the
UK Courts) it is difficult to see how any of these registrations could be maintained. As the description is part of the definition of the
mark it should not be possible to amend the description when challenged either if an amendment to the description changed the
mark from being vague to being precise this is surely a material change to the mark and so not allowable.
However, even where the colour mark is synonymous with the brand, if one cannot practically define the trademark, is this
recognition of any use (at least in legal terms)?
It may be argued that the commercial impact of this decision may not be as bad as feared, since Cadbury has a strong right in terms
of passing-off, given its long-standing association with the colour purple. Perhaps this is what Cadburys press statements implied?
However passing off is not an easy cause of action to pursue at the best of times, let alone in relation to something so inherently
weak as a colour. Even if Cadbury could establish goodwill to challenge a competing brand of chocolate using a similar colour on
their packaging, it would still need to prove the more difficult head of misrepresentation, which is particularly cumbersome where
there are other brand elements used in a prominent way on the packaging. It is not impossible but would depend heavily on the
specific third-party use. This is precisely why a company like Cadbury would want registered protection in the first place.

Conclusion
There is a shade of grey covering trademark law relating to colour. This one, technical point relating to the description of colour could
have huge repercussions for many holders of colour marks for their packaging. Further clarity over what specific descriptions are
acceptable is required and it will be interesting to see whether this leads to more litigation over this issue in the UK, and whether
other EU Courts take a similar approach.

Footnotes
1. [2013] EWCA Civ 1174.
2. UKIPO guidance, New Applications.
3. Mummery J in Supra, note 1, para 52.
4. Sieckmann v Deutsches Patent- und Markenamt (Case C-237/00).

5. Trade Marks Directive 2008/95/EC of 22 October, 2008.

6. Case C-104/01 Libertel Groep BV v Benelux-1.

Merkenbureau, [2003] I-03793.

7. Supra note 6, Opinion of Advocate General Lger at para 64.

8. Aral/Blue I [1999] I.I.C. 812, Federal Patent Court.
9. Christian Louboutin SA v Yves Saint Laurent Am Holding, Inc, 2d Cir, Case No. 11-3303-cv.
10. UK trademark application No 2346940.
11. CTM no. 31336.
12. CTM no. 747949.

Authors
Julius Stobbs is a trademark attorney and principal at Stobbs IP. He has experience in contentious trademark proceedings (including
many appearances before the Appointed Person). He provides advice to clients on management of IP portfolios, trademarks and
domain name policies, as well as IP strategies. His experience extends to advice regarding tax implications for IP, the Companies
House Tribunal and experience in acquiring the new top-level domains.
Savan Bains is a trainee trademark attorney at Stobbs IP. Savan works with clients across a wide range of sectors and assists with
all types of trademark practice, from filing applications to dealing with disputes, protection and enforcement work.