The Court of Appeal of England and Wales has allowed Nestlé's appeal from a decision of the High Court, finding that rival chocolate manufacturer Cadbury was not entitled to register its trade mark for the colour purple because its description '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. (Société des Produits Nestlé S.A. v Cadbury UK Ltd (Lewison LJ, Sir John Mummery & Sir Timothy Lloyd;  EWCA 1174 Civ; 4 October 2013).
Cadbury had applied to register the colour purple for chocolate as a UK trade mark, and had filed evidence of distinctiveness acquired through use. The mark applied for was the following, which was a purple block when reproduced in colour:
The full description of the mark was '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'. Nestlé opposed the application, but the UK Intellectual Property Office (UK IPO) held that the mark was registerable. Nestlé appealed on the basis that, while it did not challenge the finding that the mark was distinctive for chocolate per se, the mark was not capable of being represented graphically and, as such, was not registerable as a trade mark. The High Court dismissed Nestlé’s appeal.
The Court of Appeal found that the outcome of the appeal turned on a narrow point on which the UK IPO and the judge in the High Court had erred in principle. It held that the use of the word 'predominant' in the verbal description of the mark opened the door to a multitude of different forms as a result of its implied inference to other colours and visual material not described or shown in the application. In this respect, the application, being a shade of colour 'plus' other material, differed from that in Libertel (Case C-104/01), which was just an unchanging application of a single colour.
Where the colour purple was less than total on the packaging of the goods, as would be the case if it was merely 'predominant', the application would cover other matter in combination with the colour, but not graphically represented or verbally described in the specific, certain, self-contained and precise manner required. The result would not be an application to register a sign that was graphically represented, but rather multiple signs with different permutations, presentations and appearances. Allowing such a registration would offend against the principles of certainty and also fairness, by giving a competitive advantage to Cadbury. The description of the mark did not therefore satisfy the requirement of Article 2.
The Court of Appeal noted that Libertel had been taken further than it should. It observed that predominance of colour could be achieved by the use of two colours, one being more eye-catching than the other or applied to a more prominent part of the packaging, even if it was applied to a smaller area of the total packaging than the other colour. The use of the word 'predominant' in the present context was therefore too subjective, too imprecise, and inadequately clear and intelligible, to be capable of registration.
The Court of Appeal rejected Cadbury's submission that a reference to the CJEU was appropriate given that a number of trade marks, including marks registered in other Member States, were liable to be declared invalid as a result of the Court's finding. It remains to be seen whether Cadbury will seek leave to appeal to the Supreme Court. In the meantime, owners of non-conventional marks (not necessarily limited to colour marks) should review the scope of their registrations for language similar to 'predominant' which may be said to give rise to multiple permutations, and which could put such marks at risk of cancellation.
It is worth noting that the Court of Appeal acknowledged that previous Guidance from the UK IPO (and potentially, therefore, intellectual property offices in other Member States), which stated that the 'predominant colour' approach could be used, may require reconsideration. Such guidance should therefore no longer be relied upon.
The decision of the Court of Appeal comes amid the proposed amendments to the Trade Mark Regulation (207/2009/EC) and the Trade Mark Directive which, once adopted, will remove the requirement for 'graphical representation' of a sign. However, the requirements set out in Sieckmann (Case C-273/00) that a trade mark must be, among other things, clear, precise, self-contained, easily accessible and intelligible will, although not expressly, be reflected in the definition of a trade mark under the new regime. It is therefore likely that Cadbury would still be unsuccessful, even without having to satisfy the requirement of graphical representation.
The case was linked and heard together with J.W. Spear & Sons Ltd & Ots ("Mattel") v Zynga, Inc  EWCA 1175 Civ. The Court of Appeal found that Mattel's UK registered 3D trade mark for its 'SCRABBLE' tile did not satisfy the conditions of Article 2 because it was not a sign and was not capable of being represented graphically. The registration consisted of a drawing of a blank tile accompanied by the description '…a three dimensional ivory coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1-10'. The Court held that the distinctiveness of a mark was irrelevant in determining whether the first two conditions of Article 2 were satisfied. In this case they were not, as the mark potentially covered many signs achievable by numerous permutations, presentations and combinations.