Charles Russell Speechlys achieves colour trade mark registration for iconic ‘Cadbury Purple’
The High Court has found in favour of Cadbury UK Limited; partially overturning the decision of the UK Intellectual Property Office (UKIPO) Hearing Officer and allowing the registration of Cadbury’s colour per se purple trade mark – a trade mark for a specific colour (defined by Pantone 2685C) without contours and with no description defining its use.
This decision marks the end of a long journey to register a colour trade mark without contours for Cadbury’s iconic purple brand. It also provides clarity to brand owners that a “Libertel mark” (i.e. colour per se as defined by Pantone designation but without reference to the manner of use) is valid in the UK, in that it is capable of being ‘a sign’ as required by the UK Trade Marks Act.
The judge noted that obtaining a colour mark per se was not an easy task but stated: “if Cadbury’s circumstances are not right, I do not see how any other applicant would do better.” In confirming the application, the judge made it clear that his ruling did not negate the difficult task of proving distinctiveness for colour marks (an issue that was not before the court) but hoped that his judgment would give some clarity and simplify the work of the UKIPO.
The Charles Russell Speechlys team was led by Mary Bagnall, Partner, who has advised Cadbury on this matter for over a decade, with support from Olivia Gray, Senior Associate and James Yow, Associate.
Mary Bagnall, Partner and Head of Intellectual Property said:
“This is an important decision and is good news not only for Cadbury but also for other owners of colour marks in so called ‘Libertel form.’
There is now clear guidance for the UK IPO that these marks are registerable in principle and can be registered if the applicant is able to meet the ‘acquired distinctiveness’ test.
This decision does not open the floodgates for the registration of colour per se marks, which will remain difficult to obtain because of the need to provide compelling evidence of ‘acquired distinctiveness’ in the mind of the consumer, something that Cadbury was able to achieve having used Cadbury Purple as a brand for over a century”.