Cadbury’s imperial coat of purple under threat

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; [2013] EWCA 1174 Civ; 4 October 2013


This information is not intended as legal advice

EU vetoes maternity leave in surrogate cases

The European Court of Justice has ruled against claims for maternity benefits by mothers whose babies were born through surrogacy in two cases just announced, with the decisions coming weeks after the UK has agreed legislation that will put both intending surrogate and adoptive parents on the same footing as natural parents from next year.
Two mothers who had children through surrogacy have failed in their attempt to win maternity benefits, but the law will be changing from next year.
Both cases involved mothers who had taken their cases to the European Court of Justice (ECJ) to claim they were eligible to benefits under the EU Pregnant Workers Directive. But unlike the rights for pregnant women, there is no uniform set of rules on surrogacy across the EU, as it is prohibited in some member states.
In the two cases before the European Court of Justice, one involved a mother who took charge of the baby within an hour of birth and was able to breastfeed for several months. Together with her partner, she had obtained a parental order under the Human Fertilisation and Embryology Act 2008, but none of this was enough to convince the ECJ to agree the same rights as a birth mother.
The other was brought by a woman in Ireland, where surrogacy is not regulated. As the woman was medically unable to carry a pregnancy, she and her partner found a surrogate in California, USA to carry their fertilised egg. Despite the baby being their genetic child, and that under California law no other parental rights were recognised, again the ECJ ruled against her claim under the Pregnant Workers Directive.
But in future, under the new Children and Families Act 2014, things will be changing in the UK. From next April, adoption leave and pay will reflect the entitlements available to birth parents. There will be no qualifying period for leave; enhanced pay to 90% of salary for the first 6 weeks; and time off to attend introductory appointments. Intended parents in surrogacy and ‘foster to adopt’ arrangements will also qualify for adoption leave and pay.
Said Brendan O’Brien of Breeze & Wyles Solicitors Limited: “The outcome of these two cases before the European Court look surprising on the face of it. Even if the UK case had failed, it may seem surprising that the Irish case was also unsuccessful, with the claim being made by the genetic parents.
“The rulings are unlikely to influence employer attitudes for the time being, but there will be a very different position when the Children and Families Act comes into force in April 2015.
“Employers and intending adoptive and surrogacy parents who might find themselves unsure as to whether they qualify or not, because of the likely timing of a claim, would be well advised to seek advance guidance on the interim position.”
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This is not legal advice; it is intended to provide information of general interest about current legal issues.

Breeze & Wyles incorporates today

With effect from today the 1st of April 2014 the business of Breeze & Wyles Solicitors LLP has been transferred to Breeze & Wyles Solicitors Limited. All client relationships will be transferred to the new company. Apart from the name of the firm of solicitors handling your transaction nothing else will change.
The opportunities arising from the Legal Service Act 2007 have required the firm to change it structure so that it can take full control of the strategic direction and vision of the business and create a culture that places the client at the heart of everything we do.
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