A long dispute of four years came to an end when the High Court of Birmingham (UK) gave a ruling in favor of Cadbury. The dispute was over the color trademark of Cadbury viz. Purple (Pantone 2685C). In the present dispute Nestle SA, challenged a trademark ruling stating that a color cannot be protected under Section-3(1) (a) of Trade Marks Act, 1994(UK Act)and this color doesn’t have a meaning. Kraft Foods Inc.’s Cadbury denied the grounds of opposition from the beginning.
Chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes.
On 27th August, 2008 Nestle filed a notice to oppose the proposed registration. Grounds of opposition were:
The mark is not capable of distinguishing the goods of one undertaking from those of others within the meaning of S.3 (1) (a) of Trade Marks Act, 1994 because it is just a single color and colors are commonly used in trade.
b) Because the mark could take numerous forms of appearance, it is not a ‘sign’ within the meaning of S.3 (1) (a) of Trade Marks Act, 1994.
c) The sign is not capable of being graphically represented as required by S.3 (1) (a) of Trade Marks Act, 1994.
d) The mark is excluded from registration under section S.3 (1) (b), (c) and (d) of Trade Marks Act, 1994 because:
It is devoid of any distinctive character.
It designates a characteristic of the goods, namely the characteristic of having purple packaging.
It was customary in the current language or bona fide practices of the trade, the color purple being in common use at the date of the application in relation to the specified goods.
It had not acquired a distinctive character through use.
e) To the extent that the mark covers the color specified “applied to… the whole visible surface of the goods”, the application was made in bad faith contrary to S.3 (6) because the mark was not so used, and the applicant had no intention to use it like this.
f) It was inconceivable that the applicant intended to use the mark in relation to the broad range of goods specified in the application, and the applicant must have known of others use of purple, so the application was made in bad faith for this reason too.
Sections and their meaning
Section 1(1)(a) of Trade Marks Act, 1994 is as follows: “1. – (1) In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.”
Section 3(1) of Trade Marks Act, 1994 of the Act is as follows: “3. – (1) The following shall not be registered –
(a) Signs which do not satisfy the requirements of section 1(1) of Trade Marks Act, 1994.
(b) Trademarks which are devoid of any distinctive character.
(c) Trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.
(d) Trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.”
Cadbury subsequently filed a counterstatement denying the grounds of opposition. Cadbury proved to the court that they have been using this color for a century now. An employee of the company gave the evidences in which one of the evidence even showed the use of purple color by the company in packaging as early as 1914.
Cadbury was granted trademark for purple (Pantone 2685C) color on 20th October 2011. The registered mark was to be used for Chocolate in bar and tablet form; eating chocolate; drinking chocolate; preparations for making drinking chocolate.
In December, 2011 Nestle filed a lawsuit in Birmingham high Court stating that colors cannot be registered as trademarks.
According to the Birmingham Mail, on 1st October, 2012 Judge Colin Birss in London high court dismissed Nestle’s primary case stating that: “Since on the evidence the public associates the color purple itself with Cadbury’s chocolate, Cadbury is entitled to a registered trade mark for that color on the relevant goods.”
Judge Colin Birss also said, “The evidence clearly supports a finding that purple is distinctive of Cadbury for milk chocolate”, adding that Cadbury had been using the purple color in its Dairy Milk chocolate bars since 1914 in the honor of Queen Victoria.
However, the ruling does not extend to Cadbury’s boxes of chocolates, or dark or white chocolate, as the judge ruled that the color was not distinctive to chocolate in general.
Cadbury said, “The ruling allows us to register as a trademark and protect our famous color purple across a range of milk chocolate products.”
“The color purple has been linked with Cadbury for more than a century and the British public has grown up understanding its link with our chocolate,” the company said in an e-mailed statement.
Paul Medlicott, head of FMCG at law firm Addleshaw Goddard, said, “Trademarks of names and logos are familiar to most businesses, but the high court’s ruling in favor of Cadbury shows the increasing importance of color trademarks. Cadbury sought to, and has succeeded in, trademarking its distinctive purple color used in relation to its products. It is now able to prevent its competitors using that same color. The challenge faced by Cadbury in getting the color registered as a trademark is evident when you see that their trademark application was first filed in 2004.”
Fiona McBride, partner and trade mark attorney at Withers & Rogers, said: “It can be difficult to prove sufficient use to demonstrate that the color has become synonymous with the brand in the mind of the consumer.However, this decision shows that such registrations can be robust and stand up to a sustained challenge where there is a good amount of evidence of use.”
TRIPS created minimum standards of protection and regulation for most forms of intellectual property in all member countries of the WTO.
Color was classified into distinctive ‘trademark’ when Trade-Related Aspects of Intellectual Property Rights (TRIPS) made some changes to Article 15(1) and broadened the legal definition of trademark to encompass “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colors as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible”.
In India according to Section 10 (1) of Trademark Act, 1999 “A trade mark may be limited wholly or in part to any combination of colors and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark” and according to Section 10 (2) “If the trademark is registered without limitation of color then it is deemed to be registered for all colors.” Thus, simple color cannot be trademarked in India but a combination of color and a symbol can be easily trademarked.
Now after knowing what TRIPS and Indian trademark law states about color trademark, let’s get back to the aforesaid case. This is not the sole victory in a case related to color trademark. Last month, Christian Louboutin was granted trademark protection for his distinctive shoes with red soles. This decision was welcomed by the other designers because this can give brands in the fashion industry an ability to monopolize colors. Another case was of BP (Beyond Petroleum) who uses green color as a trademark for their petrol pumps. BP won the case from Woolworths in a ruling which stated that BP had used the color green in respect of its service stations for a substantial period of time and had therefore acquired distinctiveness in the color, such that people recognized green (in relation to service stations) as indicating BP.
Thus, it’s becoming necessary for companies to trademark sole colors for themselves, as many people are deceived by the counterfeit products which resembles the actual products in packaging but are nowhere nearby in quality. Trademarking colors help companies and brands monopolize market and serve consumer well.