Call us today0800 160 1298

Advantage Litigation

Welcome to Advantage Litigation Services. We provide affordable access to commercial litigation.

  • Home
    Home This is where you can find all the blog posts throughout the site.
  • Categories
    Categories Displays a list of categories from this blog.
  • Tags
    Tags Displays a list of tags that have been used in the blog.
  • Bloggers
    Bloggers Search for your favorite blogger from this site.
  • Team Blogs
    Team Blogs Find your favorite team blogs here.
  • Login
    Login Login form

Cadbury fails in appeal against trademark decision

Posted by on in Uncategorized
  • Font size: Larger Smaller
  • Hits: 317
  • Subscribe to this entry
  • Print

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.

Get in touch

  1. Your Name(*)
    Please let us know your name.
  2. Your Email(*)
    Please let us know your email address.
  3. Company Name(*)
    Please write a subject for your message.
  4. Your Phone Number
    Invalid Input
  5. Message(*)
    Please let us know your message.
  6. Anti-Spam, please enter the characters shown
    Anti-Spam, please enter the characters shown
    Invalid Input

Latest News

  • In a move that many observers will see as a victory against the increasing ‘stealth’ privatisation of the NHS, healthcare provider Circle is set to lose its contract to the Nottingham NHS Treatment Centre, despite taking legal action to get the decision changed. Circle broke new ground in 2012 by becoming the first private and for profit healthcare business to be placed in charge of running an NHS hospital. Despite this contract, at Cambridgeshire’s Hinchingbrooke hospital, returning to NHS control in 2015 due to rising financial pressures, Circle had successfully run the Nottingham NHS Treatment Centre since 2008. Despite receiving high CQC ratings for patient satisfaction and having hit NHS targets for patient treatment, the firm – who claim to operate as a ‘John Lewis style social enterprise’ – lost the contract in April this year. Circle has been criticised for taking... Read More

  • A recent judgement at the High Court in London has seen the Post Office being ordered to pay over £5 million in legal costs resulting from its ongoing legal dispute with former Post Office workers. The legal action was bought by 557 former Post Office workers, many of whom were sub-postmasters, who claim that they were falsely blamed for financial shortfalls at various small Post Office branches throughout the UK. The former workers claim that a software error in the Post Office’s computer system – called Horizon – was responsible for the discrepancies which resulted in many staff losing their livelihoods. The claimant group includes Tracy Felstead, a former Post Office employee from Shropshire who in 2001 was jailed for six months after being convicted of stealing £11,500, and has always protested her innocence. The first trial, which opened in November... Read More

  • London’s Court of Appeal has ruled that a judge in a recent libel claim had ‘seriously transgressed’ the fundamental principle of neutrality and had ‘bullied’ a Litigant in Person (‘LIP’) whilst they were giving evidence at trial. The case in question, Serafin v Malkiewicz & Ors, was a libel action involving a Polish language publication called Nowy Cza. The claimant was a LIP – meaning that he was representing himself rather than using a solicitor or barrister – and was giving evidence at the trial. The trial judge, Mr Justice Jay, was accused by the LIP of making: ..frequent gratuitous interjections during the trial, hostile to the claimant, putting the claimant under enormous pressure and making it extremely difficult for him to conduct the litigation”. The LIP’s plea was upheld at the Court of Appeal on three grounds: 1. That the judge’s conclusion that... Read More