A serie-ous case for Cadbury
Mark Caddle finds some tasty takeaways from the latest colour clash.  EWCA Civ 2715, Cadbury UK Ltd v The Comptroller General of Patents, Designs and Trade Marks, Court of Appeal, 5th December 2018.
 EWCA Civ 2715, Cadbury UK Ltd v The Comptroller General of Patents, Designs and Trade Marks, Court of Appeal, 5th December 2018
- Cadbury’s adherence to the UK IPO’s Guidelines gave rise to the potential to argue the series point regarding its Mark’s description
- The decision provides clear guidance on the treatment of series marks and the requirement for clarity and precision when applying for trade mark monopoly rights
- Cadbury’s loss is a clear warning to others trying to make more of the series registration procedure than is permitted
Cadbury UK Ltd is the proprietor of UK trade mark registration No 2020876A (the Mark), filed on 19th May 1995 and registered on 13th November 1998. The mark protected is presented as a purple square. The description provided at the time of filing was simply that “the mark consists of the colour purple”. Initially, the application claimed protection for a variety of goods and services in classes 29 and 30. It was subsequently limited to “chocolate in bar or tablet form” in class 30. Evidence exemplifying the extent of use of the colour purple by Cadbury was a determinative factor in the UK IPO accepting the mark for registration.
On 2nd April 1997, the UK IPO published its Special Notice on Colour Trade Marks, which required colour mark applicants to provide a suitably clear description of the colour constituting their mark. After toing and froing with the UK IPO, Cadbury settled on the following:
“The mark consists of 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.” (emphasis added)
Interestingly, this final wording was stipulated by the UK IPO and not instigated by Cadbury, which had unsuccessfully proposed this description:
“The mark consists of the colour purple as shown applied to the packaging or labelling of goods covered by the registration.”
Claim of series
The issue in this latest decision is whether Cadbury’s Mark constitutes a series of marks pursuant to s41 of the UK Trade Marks Act 1994 (the Act).
On 5th June 2014, Cadbury wrote to the UK IPO to claim that its Mark is a series. Rule 28(5) of the Trade Mark Rules 2008 permits the deletion of a mark in a series. Cadbury asserted that the Mark comprised a series of two marks, based on the content of the aforementioned description:
- Mark (a): the colour purple (Pantone 2685C) applied to the whole visible surface of the packaging of the goods; and
- Mark (b): the colour purple (Pantone 2685C) being the predominant colour applied to the whole visible surface of the packaging of the goods.
Cadbury wished to delete alleged Mark (b) from the series due to the opposition brought by Nestlé to Cadbury’s later trade mark application, No 2376879, also in respect of the colour purple and with the same description. Nestlé’s opposition was ultimately successful before the Court of Appeal ( EWCA Civ 1174, Cadbury 1). Nestlé submitted third-party observations in this case and was party to the proceedings as Intervener.
UK IPO answer
The UK IPO refused Cadbury’s request to acknowledge the Mark as a series. It did not accept that the wording of the description resulted in the Mark being a series. Also, pursuant to s44 of the Act, it was noted that registered trade marks cannot be altered.
The UK IPO’s decision to refuse the deletion of the predominant colour wording, alleged Mark (b), was upheld by the High Court.
The UK IPO noted that Rule 28(5) could not be relied on, as there was no application to register a series of marks. Notably, Cadbury had not completed the section of Form TM3 specifying the Mark was to be treated as a series. Further, the UK IPO noted that a request for deletion must relate to a trade mark, and the alleged Mark (b) did not fall within the definition of a trade mark (it was not an appropriate graphically represented “sign”, as confirmed in Cadbury 1). Finally, a registered mark cannot be altered, and the request conflicted with the s44 restrictions on amending registered marks.
Mr John Baldwin QC agreed that the series mark requirements were not made out. Cadbury appealed.
Court of Appeal
In its decision of 5th December 2018, the Court of Appeal (CoA) dismissed the appeal. Lord Justice Floyd, in his leading judgment, concluded that Cadbury had applied to register a single mark and not a series. The CoA noted that Cadbury had relied too heavily on the presence of “or” in the Mark’s description to provide the interpretation that there was a valid series. Floyd LJ preferred to rely on the linguistic indications as a whole in the description. He cited the wording “the mark consists of the colour purple” in concluding that this was an attempt to register one mark only.
Even if allowed as a series, the predominant colour wording in alleged Mark (b) could cover uses of the colour purple in “extravagantly different ways”. This would fall foul of s41’s requirement that marks in a series must not differ materially or create different identities.
Cadbury also put forward an alternative argument on appeal, namely that: the Mark is a permissible registration of more than one mark within a single registration, even if not a qualifying series; and the alleged Mark (b) was a separate trade mark registration (not simply the second mark in a series). It was held to be out of hand to allege that there are other means to protect a number of marks within a single registration other than by way of the series provisions.
Cadbury’s claim was founded on the description imposed by the UK IPO. The CoA expressed some sympathy with this and noted that it had been Cadbury’s adherence to the UK IPO’s Guidelines that gave rise to the potential to argue the series point regarding its Mark’s description.
Nevertheless, the decision provides clear guidance on the treatment of series marks and the requirement for clarity and precision when applying for trade mark monopoly rights. For the most part, using a series registration to cover up to six marks that do not alter in their materiality is a non-contentious procedure, but this case illuminates the ability for creative arguments to test the practices of the UK IPO. However, with Cadbury’s loss comes a clear warning to others trying to make more of the series registration procedure than is permitted.
Mark Caddle is a Chartered Trade Mark Attorney and Senior Associate at Withers & Rogers LLP
Withers & Rogers LLP