World Intellectual Property Review quotes Mary Bagnall on the Cadbury trademark win
Orange is not the only colour
Not black and white
The second mark was for “The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.”
And the third, and the one that was successful, was simply for “The colour purple (Pantone 2685C), shown on the form of application” (number 3025822).
Nestlé’s opposition to the three marks was based on legal principle, highlights Bagnall.
“It’s not for me to comment on Nestle’s motives, but these oppositions were on absolute grounds, which means they were based only on the legal requirements for registration,” she explains. “They weren’t oppositions based on the fact that Nestlé thought it had earlier rights in the colour purple.”
In an interesting twist, during the course of the appeal, the two parties actually came to a private agreement and Nestlé dropped out of the case, replaced in the hearing by the IPO.
The application of colour
Bagnall explains that the barrister for the IPO accepted that Libertel-form marks were acceptable in principle “in the right circumstances” but was unable to expand on what those circumstances would be.
“The judge said that ‘if Cadbury’s circumstances are not right, I do not see how any other applicant would do better’,” she recalls. “The hearing officer’s decision in relation to the Libertel-form mark would have the effect that no, or almost no, Libertel-form mark would ever be valid.
“Cadbury had demonstrated on numerous occasions that it had ‘acquired distinctiveness’, and the colour was properly described by reference to a Pantone shade. And that was all that had been required by the Libertel decision. It didn’t set out that anything more was required.
“So the judge upheld the appeal. That mark [‘822] was accepted and it has now been registered.”
The right wording
Justice Meade, adds Bagnall, said the mark that described the colour as “applied to the packaging of goods”, was not acceptable, because it wasn’t sufficiently specific. In other words, it didn’t say the mark “applied to the whole visible surface of packaging”. It wasn’t for the colour, per se.
“The wording, he thought, left room for the addition of other material, so that it wouldn’t just be a single colour. And therefore, he thought that that was not sufficiently clear to be registered.”
Andy King, partner and chartered trademark attorney at Mewburn Ellis, also observes that the wording itself was problematic.
“Ultimately, [those descriptions] are what seems to have hurt Cadbury. The descriptions they used were deemed to be not sufficiently clear or precise enough and it left too much wiggle room for interpretation.
“And actually, the judge seems to have decided that the true colour mark, without any of that uncertainty, was the one that was validly registered, or registrable, which is quite an interesting point.”
Establishing acquired distinctiveness is always going to be a challenge, says Bagnall.
“In most cases, it will be very, very difficult for them to establish that the colour has brand significance, that the colour has acquired distinctiveness,” she says.
Emily Sharkey, senior associate at Hogan Lovells, agrees. “Most such marks will still fail to register on the basis that they lack acquired distinctive character.
“As we know, proving that a consumer relies on a non-traditional mark as a badge of origin is difficult—see Kit Kat, ie, the four-finger shape mark, which was surprisingly unsuccessful.”
King agrees that the point about acquired distinctiveness is particularly key to these kinds of marks, where in order to get them accepted by the trademark office, there needs to be some quite significant evidence filed to support the application.
He points to the need to serve as an identifier of trade origin, which is the principal function of a trademark, he says.
“And that is quite a complicated and significant undertaking for an applicant—you’re looking at finding evidence of longstanding use and consistent use of the colour over a period of time, supported by, ideally, some form of evidence that consumers have been educated to look for that colour as functioning as a trademark.”
Julius Stobbs, founder of Stobbs Intangible Asset Management and a trademark attorney, agrees that the case pivoted on a technically very specific matter.
But he points out that while the Cadbury decision has moved things forward, in one sense, by providing clarity on what constitutes a sign, it raises yet more questions.
“While it deals with one aspect of the protection of colour, it doesn’t really deal with the protection of colour overall,” he observes. “That’s not a criticism of anyone involved in the case or the judge, but the only issue that’s being addressed is whether particular formulations can be a sign.
“And while I think we’re all probably quite interested to understand how colour can be seen as being distinctive, and how a registration might be infringed, those points—which are generally the sort of sexier points—are not addressed here.”
He adds: “Whilst Cadbury has won, the specific signs that we’re now allowed to use are either so specific, such as ‘only this colour applied to the whole visible surface of packaging’, which is a pretty difficult mark practically to use; or almost philosophical: ‘the colour per se’. So it’s quite difficult to see how that then gets applied in the real world.”
Sounds, shapes, and smells
Despite these stumbling blocks, could this case open doors for other applications for non-conventional marks, not just for colour but also sounds, shapes or smells?
Bagnall, who incidentally believes that this will not open the floodgates for people filing contourless colour marks, brings us back to the basic principles for any type of trademark application.
“The same overall criteria applies in that they must be capable of distinguishing; and they must comply with the Sieckmann criteria, which means that they’ve got to be represented in a clear and precise way. That is, ‘clear, precise, self contained, easily accessible, intelligible, durable, and objective’."
The Cadbury case was all about confirming that you need to define a specific mark, adds Stobbs. They need to be sufficiently specific to avoid any ambiguity, but specific enough in a way that doesn’t create a very broad mark, for the purposes of proving acquired distinctiveness.
“Have you unambiguously defined one mark? That’s what the court was grappling with. Where is it ambiguous versus where is it clear? I think that’s the case for all unusual marks,” he says.
“However, you have to be careful that sometimes a lack of ambiguity will make it almost impossible to prove distinctive character, so, for example, colour per se is not ambiguous according to the court, but it will be almost impossible to prove distinctive character in relation to it because it covers so many potential uses. So you need to create a balance.”
He adds: “The court found that the Libertel-style mark is not ambiguous, because it is the colour per se. It’s difficult to see any parallels between that and other types of marks because it’s such a philosophical thing—a colour is a specific point, a specific sign, and that doesn’t have exact parallels in sound, etc.”
Olivier Vrins, partner at ALTIUS, highlights issues that remain for non-conventional marks under the current law.
“We are still missing guidance to date from the courts, such as the CJEU, in this regard. For example, it is currently not possible to represent smells in a way that is accepted under trademark law, as the subject matter of protection cannot be determined with clarity and precision with generally available technology.
“In Sieckmann, the CJEU dismissed the possibility of representing an olfactory mark by either a chemical formula, a description in writing, the deposit of an odour sample, or by a combination of those elements. As they currently stand, the existing EU regulations specifically exclude the filing of samples.”
Coming back to colour, King makes another point—that there are certain categories of products in which colour per se marks “ought never be registrable”, even with acquired distinctiveness and assuming all the right descriptions have been used, such as for clothing or cars where a colour will always be seen as being just decoration.
“I can’t really imagine a situation where even quite an abstract or unusual shade of colour for those sorts of products—so a T-shirt or a car—would ever be regarded as being an indicator of trade origin, it would always really be regarded as just being decoration.
“So there are always going to be limits to the extent of a party’s ability to get colour per se trademarks.”
Finally, what are the key takeaways for other brand owners hoping to follow in Cadbury’s footsteps?
“If I was advising a client now on applying for a colour mark per se, the take-home from this decision for me would be basically just don’t include anything in the description apart from the Pantone reference,” suggests King.
“And then we’ve obviously then got to get past the acquired distinctiveness hurdle, which is, like I said before, quite a significant one to get past—and costly.”
He adds the point that colour marks don’t just have to be limited to products—they may apply to services, too.
“In fact, DynoRod is probably quite a good example of that. So I think there is some scope for trademark owners to think quite laterally if they do have a particular interest in a particular colour.”
And in the end, it’s all about simplicity. As Hogan Lovells’ Sharkey advises: “Think very carefully about the description of the trademark for which you are applying—clear and precise are the operative words.”
The full article was first published in World Intellectual Property Magazine.