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Société des Produits Nestlé S.A. v. Cadbury UK Limited
Société des Produits Nestlé S.A. v. Cadbury UK Limited is a trademark United Kingdom trade mark law case decision by the High Court of Justice, Court of Chancery, in the United Kingdom. The Court held that color purple (Pantone 2685C) was registrable as a trademark for the following goods: milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate.

Background of the Case
Cadbury had applied trademark registration for the color purple (Pantone 2685C) based on filed evidence of distinctiveness acquired through use of the mark, the application was accepted and published on 30 May 2008. Nestlé opposed the application arguing that the mark was not capable of being represented graphically and as such is not registrable as a trademark. Nestlé also argued that the description of goods was too broad.

The Court’s Decision
The Court stated that Sections 1(1)(a) and 3(1) of the Trade Marks Act 1994 Trade Marks Act 1994 were intended to implement Articles 2 and 3 of the Trade Mark Directive Trade Marks Directive which also correspond to Art. 4 and 7 of the Community Trade Mark Regulation. Therefore the Court relied on a series of judgments from the Court of Justice of the European Union (CJEU).

The issue at hand was whether Cadbury, even if they had shown that the public associates the color purple with Cadbury’s chocolate, could obtain a trademark registration for the color per se. The CJEU had determined in prior cases that color could satisfy the requirements of Art. 2 of the Directive if it satisfied three conditions: be as sign; be capable of graphical representation; and be capable of distinguishing the goods or services of one undertaking from another. Whether a color is a sign will be depend on the context in which the color is used. A color sample does not on its own constitute a graphical representation, but a sample along with a description in words and a designation of the color using an internationally recognized identification code (such as the Pantone reference system) may be considered to constitute a graphic representation.

The Court found that Cadbury had satisfied all three conditions of the CJEU test. Based on the presented evidence the public associates the color purple itself with Cadbury’s chocolate. In addition the words Cadbury used in the description of the mark, the color purple (Pantone 2685C) applied to the whole visible surface, or being the predominant color applied to the whole visible surface, of the packaging of chocolate, is capable of being a sign within Art. 2. Therefore Cadbury is entitled to a registered trademark for that color on the relevant goods and that is the mark they have applied for.

Nestlé’s next argued that the class of goods, chocolate for eating, was too broad and should be limited to milk chocolate instead of chocolate generally. The Court agreed that the class of goods should be limited to milk chocolate since Cadbury had presented no evidence that showed they used the color purple with other types of chocolate. The Court reasoned that everyone knows what chocolate is and are familiar with the distinction between chocolate for eating and chocolate for cooking. Cadbury was not seeking to include certain types of chocolate that fall within the chocolate for cooking class. The color purple was found distinctive (and therefore registrable) for Cadbury for a certain segment and chocolate and using the word chocolate alone in the description of goods would provide room for the specification to be widened beyond the application. The Court found that the specification, milk chocolate in bar and table form milk chocolate for eating; drinking chocolate; and preparations for making drinking chocolate, was sufficient and correctly tailored for this application.