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Case law has helped to flesh out what these requirements mean in practice and established that colours per se are capable of registration (Heidelberger Bauchemie GmbH: C-49/02  All ER (D) 268 (Jun) and Libertel Groep BV v Benelux-Merkenbureau: C-104/01  IP & T 187)
A bit of history: in 2004 Cadbury applied to register a trade mark for the colour purple (pantone 2685C) that ‘applied to the whole visible surface, or being the predominant colour applied to the whole visible surface of the packaging of the goods’. Nestle objected that Cadbury’s application was too vague, particularly use of the word ‘predominant’ which was subjective and could in theory protect any colour combination as long as it included purple.
In the High Court (Societe des Produits Nestle SA v Cadbury UK Ltd  EWHC 2637 (Ch),  All ER (D) 06 (Oct)) Birss J rejected Nestle’s argument stating that the word predominant ‘does not introduce any more vagueness or uncertainly than is already present and acceptable in a trade mark registration of this kind’ (implication that some level of vagueness is acceptable or desirable in trade mark applications?).
The Court of Appeal reversed the High Court’s decision finding that the word predominant could give rise to a myriad of colour combinations and permeations. This decision is to be welcomed - trade mark registrations are supposed to be clear and self-contained in order to enable third parties to ascertain the limits of that trade mark by reference to the registration alone.
However, this ruling leaves the door open for challenges to existing trade mark registrations with similarly vague descriptions. It is for the courts to determine what level of uncertainty, if any, can be tolerated.
This appeal concerned a slightly different aspect of the application of art 2 of the Directive—whether or not evidence of acquired distinctiveness was relevant.
The disputed trade mark registration comprised images of a blank ‘ivory-coloured’ Scrabble tile with the description ‘on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1–10)’. The High Court ruled that the registration fell foul of art 2—there was no clear graphic representation because the registrations covered all sizes of tile with any combination of letters or numbers displayed on the tile surface.
This time the Court of Appeal affirmed the High Court’s judgment, citing Dyson Ltd v Registrar of Trade Marks  IP & T 550 which ruled that it was unnecessary to consider the issue of acquisition of distinctive character when the mark in question does not satisfy the requirements of art 2. The message is clear—even if there is evidence that consumers associate a particular sign with a business, it does not compensate for inadequate graphic representation in the trade mark registration.
[caption id="attachment_2761" align="alignnone" width="171"] Scrabble tiles in action[/caption]
Following the line of CJEU cases affirmed by these two Court of Appeal decisions, there is no doubt that a colour can be a sign and therefore satisfy the first condition of art 2. The difficulty with colour registrations is the second condition of art 2 (capable of graphic representation). Some key considerations
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