Can a brand monopolise colours with trade marks?

Some companies believe that the colours they use in branding bring in business. Think orange for telephones or aeroplanes, red-soled shoes or even purple for asthma inhalers and a few brand names may spring to mind. However, to be entitled to a registered trade mark that will prevent other businesses from using the same colour in relation to the same, similar or dissimilar goods/services, brands have to satisfy a very high evidential burden. They must prove that they have acquired distinctiveness in the colour; namely, that a significant portion of the relevant public would associate that shade with the brand. Brands also have to get the drafting of the trade mark application right.

One company that has waged a long war over the colour purple, with mixed success, is Cadbury’s.  On 21 June 2022, the High Court of England and Wales overturned objections to one of its applications to register a UK trade mark over the colour purple in relation to the packaging of goods.

In this article, IP partner Lucy Harrold outlines the law governing colour trade marks, and explains how the decision has clarified the courts’ approach to colour marks.

The law governing colour marks

The oppositions to the Cadbury’s marks in question were made by chocolate rival Nestlé under section 3(1)(a) of the Trade Marks Act 1994 (“the Act”) on the basis that the marks did not fulfil the requirements of a sign under section 1(1) of the Act.

The law governing the requirement for a colour mark to qualify as a sign is set out in the Court of Justice of the European Union decision, Libertel [2003]. This case held that a colour mark with no special delimitation may be distinctive (and therefore become a registered trade mark) provided it can be represented graphically in a way which is “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. A pantone or other internationally recognised colour number will suffice.

History of the litigation

The parties to this dispute have been litigating over colour purple registered trade mark applications in relation to chocolate sales for several years. This culminated in the decision of the Court of Appeal in Société des Produits Nestlé S.A. v. Cadbury UK Ltd [2013] which concerned a trade mark application for “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.”

In the Court of Appeal decision, the Lord Justices rejected Cadbury’s trade mark application on the basis that the word “predominant” gave the mark multiple forms and it became the colour plus other material rather than an unchanging application of colour. This reasoning was followed in the recent decision of the High Court.

High Court decision

This recent appeal to the High Court from the decision of the Hearing Officer concerned whether or not two further trade mark applications made by Cadbury’s should be registered (a third had been granted by the Hearing Officer).

The first was No. 3 019 361 for the colour purple, “applied to the packaging of the goods” (“No. ‘361”). Note that it doesn’t say applied to the whole packaging or how much of the packaging it must be applied to. The second was No. 3 025 822 for “the colour purple (Pantone 2685C), shown on the form of application” (“No. ‘822”). Mr Justice Meade held as follows:

1. In respect of No. ‘361, he agreed with the Hearing Officer who had held that the mark was not to a single unchanging colour but would extend to situations where there were other colours and, in that way, was like the mark which failed in the Court of Appeal decision in 2013; and
2. In respect of No. ‘822, he disagreed with the Hearing Officer’s decision and concluded that the mark was registrable because it was for a colour per se and did not introduce multiple potential forms with the use of a word such as ‘predominant’. It is just a mark of the colour purple (in a stipulated pantone).

He added that it would be possible to have a mark like No. ‘361 if it specified “unambiguously and in appropriate detail how a colour is applied to goods”. However, this application had a complete lack of specificity and suffered from a high degree of ambiguity.

Is it now easier to trade mark colours?

It is a decision on a very narrow point about how to draft such applications and leads to a somewhat perplexing outcome. The trade mark application which attempted to say to what extent the colour would be used on the packaging failed and the application which made no attempt at specificity succeeded and could be registered as a trade mark for a colour per se.

The judgment suggests that introducing some more specificity into trade mark applications for colours in relation to packaging may well be a good idea, but it must be sufficient to really indicate what the sign will be. Otherwise, brand owners are better off sticking to applications for colours alone applied to packaging. If they do this, however, they must use an internationally recognised colour designation and have the requisite acquired distinctiveness in the colour in relation to their goods or services.