CASE HISTORY

Cadbury filed to register for a trademark of color purple (Pantone 2685C) on 15thOctober 2004 (Application No. 2376879). The trademark filed was for Class 30, which is for:- Chocolate in bar and tablet form chocolate confectionery, cocoa-based beverages, preparations for cocoa-based beverages, chocolate cakes. On 27th August, 2008 Nestle filed a notice to oppose the proposed registration.

Nestles grounds of opposition

The mark is not capable of distinguishing the goods of one undertaking from those of others within the meaning of S.3 (1) (a) of Trade Marks Act, 1994 because it is just a single color and colors are commonly used in trade. The sign is not capable of being graphically represented as required by S.3 (1) (a) of Trade Marks Act, 1994. It is devoid of any distinctive character.

Continued
It designates a characteristic of the goods, namely the characteristic of having purple packaging. (section S.3 (1) (b), (c) and (d) of Trade Marks Act, 1994 ) It (the purple colour)had not acquired a distinctive character through use. Because the mark was not so used, and the applicant had no intention to use it like this.

SECTION AND THEIR MEANING

Section 1(1)(a) of Trade Marks Act, 1994 is as follows: 1. - (1) In this Act a trade mark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

Section 3(1) of Trade Marks Act, 1994 of the Act is as follows:

(1) The following shall not be registered Signs which do not satisfy the requirements of section 1(1) of Trade Marks Act, 1994. Trademarks which are devoid of any distinctive character. Trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.

 Trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

CADBURY COUNTERSTATEMENT
Cadbury proved to the court that they have been using this color for a century now. An employee of the company gave the evidences in which one of the evidence even showed the use of purple color by the company in packaging as early as 1914. The color purple has been linked with Cadbury for more than a century and the British public has grown up understanding its link with our chocolate.

 Cadbury was granted trademark for purple (Pantone 2685C) color on 20th October 2011. The registered mark was to be used for Chocolate in bar and tablet form; eating chocolate; drinking chocolate; preparations for making drinking chocolate. Judge Colin Birss (the high court judge) also said, The evidence clearly supports a finding that purple is distinctive of Cadbury for milk chocolate, adding that Cadbury had been using the purple color in its Dairy Milk chocolate bars since 1914 in the honor of Queen Victoria.

OTHER VIEWS
Paul Medlicott, head of FMCG at law firm Addleshaw Goddard, said, Trademarks of names and logos are familiar to most businesses, but the high courts ruling in favor of Cadbury shows the increasing importance of color trademarks. Cadbury sought to, and has succeeded in, trademarking its distinctive purple color used in relation to its products. It is now able to prevent its competitors using that same color. The challenge faced by Cadbury in getting the color registered as a trademark is evident when you see that their trademark application was first filed in 2004.

OTHER VIEWS
Fiona McBride, partner and trade mark attorney at Withers & Rogers, said: "It can be difficult to prove sufficient use to demonstrate that the color has become synonymous with the brand in the mind of the consumer. However, this decision shows that such registrations can be robust and stand up to a sustained challenge where there is a good amount of evidence of use."