Rivals given the go-ahead to cash in with replica purple branding, as prime Easter selling season arrives
A long-running court battle between confectionary giants Cadbury and Nestlé has seen the UK Supreme Court throw out an appeal by Cadbury against an earlier judgement that refused to secure their unique colour purple as a trademark.
And despite this being a clash between two international confectionary titans, intellectual property lawyers say the lesson is one that small business would be well advised to learn.
Long time emblem of royalty and emperors, and a symbol of power and nobility, the distinctive shade has been used by Cadbury for its milk chocolate for over 90 years, since it was introduced in 1914 as a tribute to Queen Victoria. But now their rivals Nestlé could cash in with a replica wrapper, just in time for an Easter bunny bonanza.
The UK Supreme Court refused to consider an appeal against a ruling by the Court of Appeal in October, putting an end to Cadbury’s hopes of stopping rivals adopting the distinctive purple wrapping. In the Court of Appeal ruling, judges agreed with Nestlé that the specific shade of purple, identified by its design and print industry reference number – Pantone 2658C – could not be trademarked.
Their judgement hinged on Cadbury’s description of the use of the colour, saying that they were not entitled to register the trade mark for the colour purple because its description as ‘the predominant colour applied to the whole visible surface of the packaging of the goods’ did not satisfy the requirement of a sign, nor the requirement of the graphical representation of a sign, within the meaning of Article 2 of the Trade Marks Directive 2008/95/EC.
“This is a tale of two international companies with mega brand budgets battling it out in the courts. It shows the lengths that some companies will go to in protecting their brand and the value that they place on that brand identity.” said commercial expert Brendan O’Brien of Breeze & Wyles Solicitors LLP. “But in these big cases there are always lessons for small companies.
“The first one is probably that prevention is better than cure. You are unlikely to be able to defend yourself in the regal style of a Cadbury chocolate bar, so think carefully about what you have that is unique, and how you may be able to protect it. If you’re in the early stages of development, then find out whether your ideas have the potential to be trademarked, before you’ve gone too far down the road.”
He added: “The other important lesson to be learned is that you should never mess with the big brands. Nestlé’s pockets are just as deep as Cadbury’s, so they were equally matched in this case, but if you try to mimic any well known brand identity on a similar product, don’t imagine they won’t spot you. They have teams on alert, watching out for this sort of thing.”
• Société des Produits Nestlé S.A. v Cadbury UK Ltd (Lewison LJ, Sir John Mummery & Sir Timothy Lloyd;  EWCA 1174 Civ; 4 October 2013
This information is not intended as legal advice