by The Corporate and Commercial Team
Rivals no longer have to fear trade mark infringement for using the shade, as the prime Easter selling season arrives
A long-running court battle between confectionary giants Cadbury and Nestlé has seen the UK Supreme Court refuse permission to appeal by Cadbury against an earlier judgement that refused to secure their unique colour purple as a trade mark.
And despite this being a clash between two international confectionary titans, intellectual property lawyers say the lesson is one that small business would be well advised to learn.
The distinctive shade has been used by Cadbury for its milk chocolate for over 90 years, since it was introduced in 1914 as a tribute to Queen Victoria. But now their rivals Nestlé can now use the shade without fear of the threat of trade mark infringement, just in time for Easter.
The UK Supreme Court refused to consider an appeal against a ruling by the Court of Appeal in October, putting an end to Cadbury’s hopes of stopping rivals adopting the distinctive purple wrapping. In the Court of Appeal ruling, judges agreed with Nestlé that the specific shade of purple, identified by its design and print industry reference number – Pantone 2658C – could not be trademarked.
Their judgement hinged on Cadbury’s description of the use of the colour, saying that they were not entitled to register the trade mark for the colour purple because its description as ‘the predominant colour applied to the whole visible surface of the packaging of the goods’ did not satisfy the requirement of a sign, nor the requirement of the graphical representation of a sign, within the meaning of Article 2 of the Trade Marks Directive 2008/95/EC.
“This is a tale of two international companies with mega brand budgets battling it out in the courts. It shows the lengths that some companies will go to in protecting their brand and the value that they place on that brand identity.” said commercial and intellectual property expert, Emma Ladd of Gardner Leader solicitors. “But in these big cases there are always lessons for small companies.
“The first one is probably that prevention is better than cure. Most companies are unlikely to have the money to spend pursuing a trade mark like Cadbury, so think carefully about what you have that is unique, and how you may be able to protect it. If you’re in the early stages of development, then find out whether your ideas have the potential to be trademarked, before you’ve gone too far down the road. This gives you the best chance of protection – and this protection can be maintained indefinitely.”
Emma added: “The other important lesson to be learned is that big brands have deep pockets and teams of people looking out for those who try to imitate their brand. Nestlé’s pockets are just as deep as Cadbury’s, so they were equally matched in this case, but if it had been smaller, it is extremely unlikely that this matter would have got as far as the Supreme Court.”