‘Chocolate wars break out over the colour purple’ – a lesson in trade marks

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We recently came across this article featured in The Telegraph, about the long running trade mark battle concerning the distinctive purple so strongly associated with Cadbury. This may be useful when considering the elements of your products or brand that should be protected…

For just over a century, a distinctive purple has been used on wrappers enveloping Cadbury’s Dairy Milk chocolate bars. The colour, chosen because it was Queen Victoria’s favourite, even adorns Bournville train station, where Cadbury built its factory in Birmingham 140 years ago.

But, the hue has been at the centre of a long running ‘chocolate wars’ battle. And the courts have dealt the sweet manufacturer a blow weakening its ability to prevent rivals using the ‘Cadbury purple’ on chocolates.

Legal experts predicted a recent Court of Appeal ruling against Cadbury and the confectioner’s subsequent withdrawal of a 24 year old trade mark could see competitors bring out chocolates swathed in the colour so strongly associated with the company.

Cadbury tried last year to update its 1995 trade mark for the colour, called Pantone 2685C, after a challenge by its rival Nestlé proved the legal wording was too wide ranging.

Nestlé lodged its opposition amid fears Cadbury’s claim on the colour could threaten its hazelnut and caramel chocolate called the ‘Purple One’, and the vibrant decoration on its Quality Street box.

But, three judges issued an 11-page ruling finding against Cadbury adding that its failure to ‘future proof’ that trade mark hinged on a legal technicality which leaves “one feeling sympathy for Cadbury”.

The Sunday Telegraph can reveal that Cadbury, owned by Mondelez International, has now surrendered its original 1995 registration to be able to use exclusively the colour.

Rebecca Anderson-Smith, trade mark attorney at Mewburn Ellis, described the latest twists as “bad news” for Cadbury because it allows “long term adversary” Nestle to launch a strong legal challenge.

“It seems Cadbury realised their existing UK trade mark registration for that purple would be extremely difficult, if not impossible, to enforce, as they appear to have voluntarily surrendered the registration.

“They still own a separate UK trade mark registration for that purple covering “chocolate in bar or tablet form”, but this includes the same description of the mark previously considered too broad by the Court of Appeal. Consequently, it is open to attack by Nestlé, and others, for being invalidly registered. It will be interesting to see if Cadbury voluntarily surrenders this registration as well.”

A Mondelez spokeswoman said its company would continue to defend fiercely its branding.

“We have not appealed the decision, but will continue to protect what we believe is a distinctive trademark – Cadbury Purple – and challenge those who infringe it.”

A Nestlé spokesman hinted that the battle was far from over, explaining that it has products, like Quality Street and the ‘Purple One’, which “famously use the colour purple”.

“As with all colour trade marks, it is therefore important that the scope of any rights over the colour purple are clear and precise and limited to those products where it has acquired distinctiveness.”

Ms Anderson-Smith added: “Cadbury could also try to rely on any unregistered trade mark rights or goodwill they may have acquired through use of their colour in the UK, but enforcing these rights would be more onerous than relying on a valid trade mark registration.  Their claim to a monopoly in their specific shade of purple therefore seems severely weakened at this point.”

John Bradley, who worked at the Birmingham-based company for 25 years and wrote Cadbury’s Purple Reign: The Story Behind Chocolate’s Best Loved Brand, said he chose the title and purple cover of his book because it was “indelibly associated” with Cadbury.

He said purple was chosen for Dairy Milk, launched in 1905, because it was the “emperor of chocolates” and during the Roman Empire only the emperor was allowed to wear a purple toga.

“The company probably didn’t help itself in future copyright battles by using purple on other brands and altering the shade used on Dairy Milk over the years,” he said.

“When I joined in 1979, the place was a sea of purple. If copyright lawyers do later decide Cadbury has no claims on purple, it confirms everything I ever thought about lawyers.”

Queen Victoria gave Cadbury a royal warrant in 1854, making it then the official cocoa and chocolate makers for the monarch.

One advert from that time even showed the queen sitting on a train drinking cocoa.

Source: www.telegraph.co.uk/chocolate-wars-break-colour-purple/