Société Des Produits Nestlé SA v Cadbury UK Ltd

JurisdictionEngland & Wales
JudgeHIS HONOUR JUDGE BIRSS QC,His Honour Judge Birss QC
Judgment Date01 October 2012
Neutral Citation[2012] EWHC 2637 (Ch)
Date01 October 2012
CourtChancery Division
Docket NumberCase No: CH/2011/APP/0707

[2012] EWHC 2637 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

(APPEAL FROM THE UNITED KINGDOM INTELLECTUAL PROPERTY OFFICE, TRADE MARKS REGISTRY)

Rolls Building

7 Rolls Buildings

London EC4A 1NL

Before:

His Honour judge Birss QC

(Sitting as a Judge of the High Court)

Case No: CH/2011/APP/0707

Between:
Société Des Produits Nestlé S.A.
Appellant
and
Cadbury UK Limited
Respondent

Simon Malynicz (instructed by RGC Jenkins & Co) for the Appellant

Emma Himsworth QC (instructed by Charles Russell LLP) for the Respondent

Hearing dates: 25th May 2012

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

HIS HONOUR JUDGE BIRSS QC His Honour Judge Birss QC
1

In 2004 Cadbury UK Limited ("Cadbury") applied for registration of a trade mark under application No. 2 376 879. The point of the application was to register the colour purple as a trade mark for chocolate. The Examiner objected to the application on the grounds that the trade mark was devoid of distinctive character. However, after Cadbury had filed evidence of distinctiveness acquired through use of the mark, the application was accepted and published in the Trade Marks Journal on 30 th May 2008.

2

The mark applied for was the following:

Mark

Description of mark:

The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.

3

The rectangle above is a purple block when reproduced in colour.

4

The goods specified were to be

Class 30:

Chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes.

5

In August 2008 Société des Produits Nestlé ("Nestlé") opposed the Application in Opposition No. 97819. Mr Allan James, the Principal Hearing Officer on behalf of the Registrar of Trade Marks heard the opposition. On 20 th October 2011 he gave a preliminary decision essentially finding for Cadbury and allowing the application. In doing so Mr James amended the specification of goods in certain respects to reflect his findings on the evidence. He gave the parties time to make submissions on the amended specification of goods and on 2 December 2011 he issued his final decision allowing the application to proceed to registration.

6

The specification of goods which Mr James decided the mark would be registered for was:

Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate.

7

Nestlé now appeals against the decision. Cadbury also filed a respondent's notice together with a cross-appeal on costs.

8

The matter came before me on 25 th May 2012. Simon Malynicz appeared for Nestlé instructed by RGC Jenkins. Emma Himsworth QC appeared for Cadbury instructed by Charles Russell. At the hearing it was agreed that the way forward was to deal with Nestlé's appeal first. Cadbury's cross-appeal could be addressed later if necessary.

9

Before Mr James, the issues included questions of principle and law but a substantial part of the dispute below related to the evidence concerning the use of the colour purple by Cadbury and its licensees, use of purple by others and the perception of third parties. Some of Cadbury's evidence of use had been filed at the examination stage and was adopted in the opposition proceedings and some had been filed during the opposition. Some also was filed in support of an earlier Cadbury application. Three Cadbury witnesses were cross-examined before Mr James.

10

On the issues of principle (and on a point on bad faith) Mr James found in favour of Cadbury. His conclusions on the facts, and having heard the evidence, addressed the various parts of the specification of goods sought separately as follows:

i) For "chocolate in bar and tablet form" he decided that the mark had acquired a distinctive character in the required sense (paragraph 112). There was evidence that purple had been used on Cadbury's Dairy Milk since 1914.

ii) For "chocolate assortments", although there was a general association between Cadbury and the colour that association was blurred by the use of other colours too. Cadbury's best selling assortment (Roses) is primarily light blue. The claim to long standing use of a consistently purple box for Milk Tray was not supported by the evidence and Cadbury's Heroes (which are in a purple box) was a relatively new product. Accordingly Mr James rejected Cadbury's case on "chocolate assortments", finding that Cadbury had not proved the colour was distinctive by the relevant date in that class (paragraph 114).

iii) As for "chocolate confectionery", he found that this term covers confectionery consisting of just chocolate itself and other confectionery products for which chocolate is an important ingredient. Focussing on the first group he noted that Cadbury's Buttons and Cadbury's Twirl had been sold in mainly purple packaging for more than 10 years. Mr James concluded on all the evidence that the colour was distinctive of Cadbury for chocolate per se (paragraph 115). However for chocolate confectionery consisting of a blend of chocolate with other things, he rejected Cadbury's case and so held that Cadbury failed on the category "chocolate confectionery" at large (paragraph 117).

iv) For the various beverages, Mr James noted there was no evidence that Cadbury's cocoa product had been sold in purple packaging (paragraph 22) but accepted that the mark was distinctive for drinking chocolate and preparations for drinking chocolate (paragraph 121).

v) For "chocolate cakes" Mr James did not accept Cadbury had shown the mark was distinctive at the relevant date (paragraph 123).

11

In order to reflect his finding that the mark was distinctive for chocolate per se but not chocolate confectionery at large Mr James allowed the registration for "chocolate for eating". The reason for the qualification "for eating" was to ensure the specification stayed within the original list of goods since "chocolate" alone would not do so because cooking chocolate had not been within the original specification.

12

Before me Nestlé does not seek to overturn Mr James' key conclusions arising from the evidence above nor do they challenge the finding on lack of bad faith. In particular Nestlé does not challenge the important findings that the mark applied for is in fact distinctive (subject to a point on categories of goods). The mark is capable of distinguishing the goods of one entity from those of another. However that does not mean that Cadbury necessarily must win. The main part of Nestlé's appeal is a point of principle. The argument is that the mark applied for is not a sign capable of being represented graphically and as such is not registerable as a trade mark. This point has a number of detailed facets which I will address below. Two secondary points are taken on the specification of goods (on the inclusion of plain chocolate and on the term "chocolate for eating"). Before me Cadbury supports the decision below. It submits the appeal should be dismissed. By its Respondent's Notice Cadbury argues that it would not obtain an unfair competitive advantage by registration of the mark. Neither side argued this as a free standing issue and I do not need to consider the Respondent's Notice separately from the general issues on the appeal.

13

Although the general point raises important questions of trade mark law which could be the subject of a reference or references to the CJEU, this court is not the final tier of possible appeal in these proceedings and both parties asked me to decide the issue and not to make a reference. Accordingly I will not do so.

The approach to appeals from the Registrar of Trade Marks

14

By section 76 of the Trade Marks Act 1994, an appeal from the decision by the Registrar may be brought to an Appointed Person or to the court. Ms Himsworth submitted that the nature and approach to such appeals had been helpfully summarised by Daniel Alexander QC, sitting as a Deputy High Court Judge in Digipos Store Solutions Group Ltd v. Digi International Inc [2008] EWHC 3371 (Ch); [2008] RPC 24 at paragraphs [5] and [6] in which he stated:

5. It is important at the outset to bear in mind the nature of appeals of this kind. It is clear from REEF Trade Mark [2003] R.P.C. 5 (" REEF") and BUD and BUDWEISER BUDBRÄU Trade Marks [2003] R.P.C. 25 (" BUD") that neither surprise at a hearing officer's conclusion nor a belief that he has reached the wrong decision suffice to justify interference by this court. Before that is warranted, it is necessary for this court to be satisfied that there is a distinct and material error of principle in the decision in question or that the hearing officer was clearly wrong ( REEF). As Robert Walker L.J. (as he then was) said:

"… an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance to interfere in the absence of a distinct and material error of principle" (REEF, para. 28)

6. This was reinforced in BUD, where the Court of Appeal made it clear that it preferred the approach of the appellate judge but nonetheless held that there was no error of principle justifying departure from the hearing officer's decision. As Lord Hoffmann said in Biogen Inc v Medeva plc [1997] R.P.C. 1 at 45, appellate review of nuanced assessments requires an appellate court to be very cautious in differing from a judge's evaluation.

15

Mr Malynicz did not disagree with Ms Himsworth's submission. I respectfully agree with the learned Deputy High Court Judge. I will approach this...

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