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Cadbury fails in appeal against trademark decision

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A recent judgement at the Court of Appeal in Cadbury UK v The Comptroller General of Patents Designs and Trademarks has upheld a 2016 High Court decision meaning that confectionary manufacturer Cadbury is unable to revise part of a trade mark it owns by removing a description it feared had invalidated another of its marks.

The trade mark in question is for the purple colour used by Cadbury on many of its products, in particular on Dairy Milk , the UK’s best-selling chocolate bar. Cadbury owns two marks for the colour, one of which was invalidated following a lengthy dispute with rival Nestlé. The description for the trade mark at issue (the 876 mark) is as follows:

“The mark consists of the colour purple 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”

In 2014, Cadbury wrote to the registrar of trade marks at the Intellectual Property Office (IPO) submitting that the 876 mark ‘in fact sets out a series of two marks. One, referred to as ‘a’, applies to the colour purple on the ’whole visible surface of the packaging’, the other, ‘b’, that applies to purple being the ‘predominant colour’ on the packaging. It hoped to delete ‘b’ and retain ‘a’.

Cadbury, which feared its remaining trade mark could be invalidated, said it made the application in light of its dispute with Nestlé. The registrar refused Cadbury’s request on three grounds: it did not apply for a series mark at the time of registration; there was no ’mark’ to be deleted because the words in the registration did not describe a trade mark, and any deletion amounted to alteration not permitted under the Trade Marks Act 1994. The High Court subsequently backed the registrar’s decision.

Commenting on the the judgment, Lord Justice Christopher Floyd said:

Beguilingly though it was put, I cannot accept Cadbury’s argument that there are two marks.’ According to Floyd LJ, once one starts to 'parse the description’ on the basis that every option gives rise to a different mark, you are faced with the fact that the predominant colour wording itself covers a multitude of different signs…‘rather than reach such a conclusion, the informed reader of the registration would, I have no doubt, conclude that the various alternatives covered by the description were not intended to identify separate marks, but were parts of a generalised but imprecise description of a single mark"

A spokesperson Cadbury’s parent company Mondelēz, said:

Our iconic colour purple has been used for Cadbury chocolate products for more than a century and is synonymous with the brand. We will continue to protect what we believe is a distinctive trade mark.”

If you are thinking about suing another company but are worried about the costs of resolving the dispute or going to court, Advantage Litigation Services can help. We have vast experience navigating the different ways of funding commercial dispute resolution and are best placed to help you identify the most appropriate funding option and litigation protection that will best benefit you and your business. Click here to contact us or call 0800 160 1298 to discuss how we can help you manage the risks and find a funding option that works for you.

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