What links a Scrabble tile and Cadbury's purple? (hint, think trade marks)

What links a Scrabble tile and Cadbury's purple? (hint, think trade marks)
 The Court of Appeal has recently shed some light on tricky issues around trade mark registration - specifically the meaning and scope of the requirement for 'graphic representation'. The two appeals, Societe des Produits Nestle SA v Cadbury UK Ltd [2013] EWCA Civ 1174 and JW Spear & Son Ltd v Zynga Inc

 [2013] EWCA Civ 1175 were brought together by the Court of Appeal because of the similarity in legal issues.

What exactly was the issue on appeal?

The Court of Appeal had to determine the contested trade mark application for Cadbury's purple colour and the validity of the registration for a Scrabble tile. Specifically, the court had to consider whether the lower courts had misapplied Directive (EC) 2008/95 (the Directive) and the Trade Marks Act 1994, s 1(1) which define a trade mark as:

  • a sign
  • capable of being represented graphically, and
  • capable of distinguishing the goods or services of one undertaking from those of other undertakings

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 [2004] All ER (D) 268 (Jun) and Libertel Groep BV v Benelux-Merkenbureau: C-104/01 [2004] IP & T 187)

Why did the Court of Appeal reverse the High Court’s decision on Cadbury’s registration of the colour purple?

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 [2012] EWHC 2637 (Ch), [2012] 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 ac

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