2017-05-22
A question that is interesting to ask among trademark experts is - "Can you trademark a colour?" A colour is part of the public domain and ideally, any element in the public domain which is generic cannot be trademarked. For example, the term "apple" cannot be trademarked. However, there have been cases where colour has been trademarked. An example is the trademark case between Imperial Tobacco and Imperial Tobacco JTI MacDonald, the Court stated that "A colour alone may be trademarked by the Canadian Law and is not a distinguishing guise."
The case of Cadbury is interesting to take a look at, even though it takes place in the United Kingdom. If you have ever eaten a Dairy Milk chocolate, you may have noticed that the colour purple plays a dominating role. (In case you have not, refer to the image below)
The Dispute
Cadbury attempted to trademark the colour purple. In 2004, it filed an application for the purple shade of Pantone 2685C with the UK Trademark Office. The trademark office reviewed the application and published it in the Trade Marks Journal in 2008.
This is where the dispute began. Nestlé opposed the trademark registration on the grounds that a colour cannot be protected under Section 3(1) (a) of Trade Marks Act, 1994. Nestle argued that:
- The mark cannot be distinguished between two or more brands.
- Since the mark could take numerous forms of appearance, it is not a ‘sign’ (as per the Trade Marks Act)
- The mark is excluded from registration because it does not have a distinctive character
Cadbury’s Counter
Cadbury countered all of Nestlé’s claims by filing a counterstatement denying the grounds of opposition. Cadbury presented evidence that they have been using this colour for a century. The evidence specifically showed that Cadbury has used the purple shade of Pantone 2685C as far back as 1914.
In 2011, Cadbury was granted the trademark to the purple shade of Pantone 2685C.
Nestlé’s Escalation
Unsatisfied, Nestlé decided to file a lawsuit with the Birmingham High Court stating that colours cannot be registered as trademarks. This case was dismissed. Judge Colin Birss delivered a judgement in 2012 and said, "Since on the evidence, the public associates the color purple itself with Cadbury’s chocolate, Cadbury is entitled to a registered trademark for that color on the relevant goods."
Learnings
This case is interesting for several reasons.
- Can Colour be Trademarked?Colour can be trademarked as long as it is related to the product. Cadbury was able to trademark the colour purple. Judge Colin Birss also said, "The evidence clearly supports a finding that purple is distinctive of Cadbury for milk chocolate". The Court’s ruling did not extend to Cadbury’s dark or white chocolates.
- Colour Purple Trademark DisputesTrademark disputes are complicated affairs and it does not necessarily end at a single location. Cadbury and Nestlé’s dispute lasted for 8 years, however, Nestlé was unable to come up with a viable strategy to prevent Cadbury from trademarking the colour.
- A Trademark WarThis trademark dispute between Cadbury and Nestlé is a small battle in a large-scale trademark war between the two companies. Both the companies file trademark cases against each other. For example, Nestlé’s KitKat attempted to trademark its iconic shape, but was foiled by Cadbury.
Trademark disputes are complex matters and a company should move forward only with expert guidance. If you are being harassed by another entity, there are other methods of fighting back which don’t necessarily means you fight it in court.
If you are embroiled in a trademark dispute, Trademarks Patent Lawyer will be able to provide the correct assistance for your business.
