A recent decision of the U.K. High Court of justice adds some clarity to the form of trademark applications claiming colour as a mark. Société des Produits Nestlé S.A.v. Cadbury UK Limited [2022] EWHC 1671 (UK Ch).
Cadbury UK Limited (Cadbury) filed three trademark applications. The first mark was for the colour purple designated by a Pantone number, “applied to the whole visible surface of the packaging of the goods”. The second mark was for the colour purple, defined in the same way, “applied to the packaging of the goods”. The key difference compared to the first application was there was no requirement for application to the whole visible surface, and the mark description is silent as to how much of the visible surface of the packaging must have purple applied. The third mark was for the colour purple, defined in the same way, with no reference to where it was to be applied.
All three applications were opposed by Société des Produits Nestlé S.A. ( Nestlé ) who asserted the application for marks did not fulfil the requirements of a « sign » under the legislation. An additional ground of opposition was the alleged lack of acquired distinctiveness, but it was decided to deal with the first ground and then deal with the second ground at a later date. A colour cannot be presumed to be a sign. There is a heavy onus on the applicant to show that the colour used has acquired distinctiveness and conveys a message concerning the source of the goods or services in the issue.
The Oppositions
The Hearing Officer rejected the opposition concerning the first application and allowed the opposition concerning the second and third applications The opposition to the first application was rejected on the basis that it was possible to register colours in the abstract and without contours.
For the second application, the opposition was allowed since the Hearing Officer found that the wording of the application not limited to the whole surface or in any other way was problematic. She said this meant the mark was not limited to a single unchanging colour but would extend to situations where there were other colours.
For the third application, the opposition was also allowed since it was not explained how the colour was to be used as a sign, whether it be on the packaging, advertising materials or applied to the goods themselves.
The Appeal
Cadbury appealed for the allowance of the two oppositions. Nestlé and Cadbury settled their long-running dispute over using purple as a trade-mark for chocolate, after the decision but well before this appeal came for hearing. However, the U. K. Comptroller-General of Patents, Designs and Trade Marks (“the Comptroller”) intervened in the appeal to help the Court in relation to an area of law that it was agreed was uncertain and of some importance.
The case law in the U.K established the following matters:
An application to register a trademark must satisfy three conditions (i) there must be a sign; (ii) it must be capable of graphical representation; (iii) it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
The purpose of the requirements is to prevent abuse of trade-mark law to obtain an unfair competitive advantage.
Identification requirements for entry of a trade-mark on the public register of trade-marks include clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity.
The identification requirements are not satisfied if the mark could take on a multitude of different appearances, which would create problems for registration of the mark and give an unfair competitive advantage over competitors.
Colours are normally a simple property of things or a means of decorating things. They are not normally capable of being a sign. A sign conveys a message. The sign is capable of being registered as a trademark, if the message is about the source of goods or services.
Depending on the facts and circumstances, colours, or combinations of colours, designated in the abstract and without contours and used in relation to a product or service are capable of being “a sign",
As for the second condition of graphical representation, in a mark consisting of two or more colours designated in the abstract and without contours, qualities of precision and uniformity are required. The colours must be arranged by associating them in a predetermined and uniform way.
Those requirements are not met by the mere juxtaposition of colours without shape or contours, or by reference to colours in every conceivable form so that the consumer would not be able to recall or repeat with certainty the experience of purchase. The scope of protection afforded by such a mark would be unknown both to the competent authorities responsible for maintaining the register and to economic competitors. Registration would confer unfair competitive advantages on the proprietor of the mark.
On applying these principles, the Judge agreed with the Hearing Officer concerning the second application because the application left it significantly, undesirably and unnecessarily unclear whether a combination of marks including purple and other colours would be within the scope of the right applied for. The third application did not suffer from this problem because it was conceptually just one single thing: the colour purple. The appeal was allowed concerning it.
The Canadian Position
The Trademarks Act was amended effective June 17, 2019, to allow for the application of non-traditional marks. As yet a body of case law has not yet developed; however, CIPO has published a practice notice. The Notice provides that
….if the trademark consists of a single colour or combination of colours without delineated contours, a statement to that effect must be included in the application.
For a trademark consisting of colour per se to be clearly defined under paragraph 30(2)(c) of the Act, the application must include a description that provides the common name of the colour(s). A visual representation consisting of a square swatch in each colour is also required.
The application must not include a statement that colour is claimed as a feature of the trademark as colour is the trademark and not merely a feature thereof.
An example of acceptable descriptions of a colour per se trademark would be:
The trademark consists exclusively of the colour red without delineated contours, as shown in the visual representation.
Conclusion
It may be some time before these issues are dealt with by the Courts in Canada. However, the requirement of the Trademarks Act that an application for a trademark consisting of colour per se contains a representation or a description or both that permits the trademark to be clearly defined, will likely require an application to be more specific. Of the applications from the U.K decision, only the first application may be acceptable in Canada.
If you have questions, please contact me at mckeown@gsnh.com.
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These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Lawyer’s Daily published by LexisNexis Canada Inc.