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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Société Des Produits Nestlé S.A. v Cadbury UK Ltd  EWHC 2637 (Ch) (01 October 2012)
Cite as:  ECC 5,  EWHC 2637 (Ch),  ETMR 2,  RPC 14
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(APPEAL FROM THE UNITED KINGDOM
INTELLECTUAL PROPERTY OFFICE,
TRADE MARKS REGISTRY)
7 Rolls Buildings
London EC4A 1NL
B e f o r e :
(Sitting as a judge of the High Court)
| Société des Produits Nestlé S.A.
|- and -
|Cadbury UK Limited
Emma Himsworth QC (instructed by Charles Russell LLP) for the Respondent
Hearing dates: 25th May 2012
Crown Copyright ©
His Honour Judge Birss QC :
Description of mark:
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.
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.
Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate.
i) For "chocolate in bar and tablet form" he decided that the mark had acquired a distinctive character in the required sense (paragraph 112). There was evidence that purple had been used on Cadbury's Dairy Milk since 1914.
ii) For "chocolate assortments", although there was a general association between Cadbury and the colour that association was blurred by the use of other colours too. Cadbury's best selling assortment (Roses) is primarily light blue. The claim to long standing use of a consistently purple box for Milk Tray was not supported by the evidence and Cadbury's Heroes (which are in a purple box) was a relatively new product. Accordingly Mr James rejected Cadbury's case on "chocolate assortments", finding that Cadbury had not proved the colour was distinctive by the relevant date in that class (paragraph 114).
iii) As for "chocolate confectionery", he found that this term covers confectionery consisting of just chocolate itself and other confectionery products for which chocolate is an important ingredient. Focussing on the first group he noted that Cadbury's Buttons and Cadbury's Twirl had been sold in mainly purple packaging for more than 10 years. Mr James concluded on all the evidence that the colour was distinctive of Cadbury for chocolate per se (paragraph 115). However for chocolate confectionery consisting of a blend of chocolate with other things, he rejected Cadbury's case and so held that Cadbury failed on the category "chocolate confectionery" at large (paragraph 117).
iv) For the various beverages, Mr James noted there was no evidence that Cadbury's cocoa product had been sold in purple packaging (paragraph 22) but accepted that the mark was distinctive for drinking chocolate and preparations for drinking chocolate (paragraph 121).
v) For "chocolate cakes" Mr James did not accept Cadbury had shown the mark was distinctive at the relevant date (paragraph 123).
The approach to appeals from the Registrar of Trade Marks
5. It is important at the outset to bear in mind the nature of appeals of this kind. It is clear from REEF Trade Mark  RPC 5 (" REEF ") and BUD and BUDWEISER BUDBRÄU Trade Marks  RPC 25 ("BUD") that neither surprise at a hearing officer's conclusion nor a belief that he has reached the wrong decision suffice to justify interference by this court. Before that is warranted, it is necessary for this court to be satisfied that there is a distinct and material error of principle in the decision in question or that the hearing officer was clearly wrong (REEF). As Robert Walker L.J. (as he then was) said:
"… an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance to interfere in the absence of a distinct and material error of principle" (REEF, para. 28)
6. This was reinforced in BUD, where the Court of Appeal made it clear that it preferred the approach of the appellate judge but nonetheless held that there was no error of principle justifying departure from the hearing officer's decision. As Lord Hoffmann said in Biogen Inc v Medeva plc  RPC 1 at 45, appellate review of nuanced assessments requires an appellate court to be very cautious in differing from a judge's evaluation.
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.
Absolute grounds for refusal of registration
3. - (1) The following shall not be registered -
(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks 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) trade marks 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."
Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.
27. In that regard it must be pointed out that a colour per se cannot be presumed to constitute a sign. Normally a colour is a simple property of things. Yet it may constitute a sign. That depends on the context in which the colour is used. None the less, a colour per se is capable, in relation to a product or service, of constituting a sign.
23. As the Court has already held, colours are normally a simple property of things (Libertel, paragraph 27). Even in the particular field of trade, colours and combinations of colours are generally used for their attractive or decorative powers, and do not convey any meaning. However, it is possible that colours or combinations of colours may be capable, when used in relation to a product or a service, of being a sign.
33. Accordingly, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way.
34. The mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours 'in every conceivable form', as is the case with the trade mark which is the subject of the main proceedings, does not exhibit the qualities of precision and uniformity required by Article 2 of the Directive, as construed in paragraphs 25 to 32 of this judgment.
35. Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark.
40. Subject to the above, it must be accepted that for the purposes of Article 2 of the Directive colours and combinations of colours, designated in the abstract and without contours, may be capable of distinguishing the goods or services of one undertaking from those of other undertakings."
The arguments before me
i) That Cadbury's mark is not a sign;
ii) That Cadbury's mark does not satisfy the Sieckmann criteria for graphical representation;
iii) That more than one colour was implied in Cadbury's mark;
iv) That in this case a so-called "spatial delimitation" was necessary; and
v) That the concept of "context" in Libertel had been misapplied by Mr James.
"Libertel did not hold that a non-spatially delimited colour mark that specified a Pantone shade, would, in all cases, satisfy the 'sign' requirement. It depends on the 'context' and to date the only clear guidance on what this context includes is that of the Advocate General and the Court of Justice in Heidelberger"
Nestlé's primary case
i) First the phrasing presents alternatives (whole or predominant).
ii) Second the reference to "predominant" itself makes the mark subjective. To be predominant means the colour must be the strongest or main element (based on the OED definition) and to assess that would be impossibly subjective. Mr Malynicz submitted that the cross-examination showed that Cadbury's intention was for "predominant" to cover a very wide and subjective variety of circumstances. So even if Cadbury could be entitled to a pure colour registration for purple (Pantone 2685C) for the relevant goods, that is not the mark they have applied for.
iii) Third, the reference to purple being the predominant colour recognises that another colour or colours will be present and effectively means that the mark applied for is a colour combination mark and should be treated as such. If so it falls foul of Heidelberger since it is not spatially delimited, it is indeterminate and violates Art. 2.
78 […] the words "….applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods" serve to identify a specific use of the colour purple which constitutes a sign. That is not to say that the colour purple will not be used with other material on the packaging. It is clear from the evidence that it is often so used. However, that other material does not form a part of the sign applied for. It is not therefore appropriate to regard the mark as a combination or colours, or indeed a combination of the colour in question with any other distinguishing matter.
85. Be that as it may, I do not consider that the words are too vague. It is true that they require a decision taker to make a judgment as to whether a colour is the predominant one used on the visible packaging for a product. Mr Creighton's evidence at paragraph 31 above gives a reasonable idea of how such a judgment would most likely be made. It does not appear to me to present more difficulty than other judgments required to be made in relation to infringement. For example, it does not appear to me to any more difficult than deciding whether consumers would regard the purple covered by the application as being the same as another purple, or whether such differences as there may be would be likely to go unnoticed by an average consumer.
Conclusion on the main part of Nestlé's appeal
The specification of goods
Milk chocolate in bar and tablet form; milk chocolate buttons
chocolate for eating; drinking chocolate; preparations for making drinking chocolate.
Milk or plain chocolate
128. I recognise that plain chocolate, milk chocolate and white chocolate are recognised types of chocolate. And it is true that Cadbury only uses the colour on the milk chocolate products that make up the vast bulk of its business. Further, Cadbury's own witness, Ms Watson, makes the point that the distinctiveness of the colour has been built around products for which milk chocolate is the key ingredient. On the other hand, all types of chocolate share the same basic properties. And I have found that a significant proportion of consumers would expect chocolate sold under the mark to be a Cadbury product. I therefore reject Nestlé's submission on the […] point.
56. The greater the number of the goods or services for which the trade mark is sought to be registered, the more excessive the exclusive right which it may confer is likely to be, and, for that very reason, the more likely is that right to come into conflict with the maintenance of a system of undistorted competition, and with the public interest in not unduly restricting the availability of colours for the other traders who market goods or services of the same type as those in respect of which registration is sought.
Chocolate for eating
130. Everyone knows what chocolate is, and we are all familiar with the meaning of the word 'eating'. Further the term 'cooking chocolate' is well understood. I cannot therefore understand why the meaning of 'eating chocolate' should be unclear, even if it is unfamiliar. I therefore reject Nestlé's […] point.
Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate.
"97. The appellant's primary case is set out above. If it is right about its primary case on section 3(1)(a) then the mark cannot be said to have acquired distinctive character under the proviso to section 3(1)(b) of the Act. The appellant does not run any discrete arguments under s3(1)(b). It confines the appeal to asserting that it is not possible for a mark (a) which is not a sign or (b) whose graphical representation does not satisfy the Sieckmann criteria, to acquire distinctive character through use."
Milk chocolate in bar and tablet form; milk chocolate for eating; none being chocolate assortments or other products consisting of a blend of chocolate with other ingredients; drinking chocolate; preparations for making drinking chocolate.