Stuart Whitwell - joint managing director at Intangible Business: Cadbury’s lose claim to the colour purple...

After a mammoth ten year legal battle, the Supreme Court has refused to allow Cadbury’s to trademark a specific shade of purple, Pantone 2685C, for its iconic chocolate packaging. Cadbury’s first made the application in 2004 and was immediately faced with opposition from competitors, primarily Nestle, which also used purple in its chocolate wrappers.

Cadbury’s was initially granted the trademark; however Nestle successfully appealed the ruling in October 2013. The Supreme Court has now denied Cadbury’s appeal, leaving it with very few options to continue preventing other confectionaries from using Pantone 2685C.

It’s understandable why Cadbury has attempted to protect its shade of purple, with the ever increasing threat of competition from other brand owners as well as supermarket own brand products. By trademarking the colour purple, it would prevent others from passing off its products as Cadbury’s products.
But the Supreme Court’s decision in this case doesn’t come as a huge surprise – it’s notoriously difficult to trademark a colour which is

linked to a brand. Successful trademarks are marks that consumers rely upon to identify a specific brand, whether that be colour, shape or design. The Court of Appeal found that the trademark application lacked "the required clarity, precision, self-containment, durability and objectivity to qualify for registration."

Previously, the Louboutin vs. Yves Saint Laurent case overturned a precedent that a single colour cannot be trademarked. However, this decision was closely linked to design, rather than colour itself as in this case the trademark was narrowed to the red-soled shoe, rather than the shade of red alone.

Despite Cadbury’s efforts to narrow the parameters of its trademark to solely milk chocolate products, the UK courts felt the trademark lacked the required specificity to be distinctive to consumers. Whilst it seems Cadbury’s has failed to protect its brand through this trademark, it has suggested re-wording the application to better define the usage of the colour on packaging.

Regardless of the trademark registration, Cadbury’s may also be able to protect its brand through the common law principle of passing off. It provides the ability to prosecute companies it believes to be mimicking its products and suggesting to consumers that they are associated with Cadbury’s.

As markets become increasingly competitive, protecting your brand is becoming a priority to many, but these lengthy and significantly costly legal battles are proving inadequate for the needs of businesses. Trademark legislation has thrown up some unusual cases in recent years, and the constant appeals battles are a sign of their ambiguity to both legal professionals and businesses.