Société des Produits Nestlé S.A. v Cadbury UK Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Meade |
| Judgment Date | 05 July 2022 |
| Neutral Citation | [2022] EWHC 1671 (Ch) |
| Docket Number | Appeal No: CH-2019-000131 |
| Court | Chancery Division |
| Year | 2022 |
and
[2022] EWHC 1671 (Ch)
Mr Justice Meade
Appeal No: CH-2019-000131
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
Rolls Building
Fetter Lane
London, EC4A 1NL
Iain Purvis QC (instructed by Charles Russell Speechlys LLP) for the Appellant
Dominic Hughes (instructed by the Government Legal Department) for the Intervener
The Respondent did not take part in the appeal, did not appear, and was not represented
Hearing date: 21 June 2022
I direct that no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic. This Judgment was handed down remotely by email circulation to the parties' representatives and release to the National Archives. Deemed date for hand-down: 5 July 2022.
| Introduction | 3 |
| The Marks | 3 |
| The issues on this appeal | 5 |
| The law | 7 |
| The decision of the Hearing Officer, and analysis | 14 |
| Conclusion | 16 |
INTRODUCTION
This is an appeal from a decision of 12 April 2019 of the Hearing Officer, Louise White (“the Decision”) in an opposition brought by Nestlé against three marks applied for by Cadbury in class 30, each concerning, in slightly different ways, the colour purple (“the Opposition”, “the Marks”). The Opposition failed in respect of one of the Marks and succeeded against the other two. It will be important to my reasoning to describe the Marks individually, and I do that below.
Nestlé and Cadbury settled their long-running dispute over the use of purple as a trade mark for chocolate, after the Decision but well before this appeal came for hearing. So Nestlé is no longer a party, although it observed the hearing before me, which was a remote one.
Nestlé in fact filed two oppositions to the Marks. The first, the Opposition, was under s. 3(1)(a) of the Trade Marks Act 1994 (“ TMA 1994”) on the basis that the Marks did not fulfil the requirements of a “sign” under s. 1(1) TMA 1994. The second was under s. 3(1)(b), which would have turned on whether the Marks had acquired distinctiveness. The second was stayed to await the result of the first, with the result that the Decision concerned only s. 3(1)(a) and whether each of the Marks could validly be a sign.
With Nestlé having dropped out of the picture, the Comptroller-General of Patents, Designs and Trade Marks (“the Comptroller”) sought to intervene in the appeal to help the Court in relation to an area of law which it submitted (and I agree) was uncertain and of some importance.
The Comptroller's application to intervene came very close to the hearing of the appeal before me, owing to an administrative error which I accept was entirely unintentional. Cadbury very sensibly did not oppose and I made an Order permitting the intervention. As a result I received helpful written and oral submissions from Mr Dominic Hughes of Counsel for the Comptroller, which were entirely in the spirit of the Comptroller's proper role and function as an intervener.
Cadbury was represented by Mr Iain Purvis QC.
THE MARKS
The appeal raises two closely related issues, one on each of the Marks against which the Opposition succeeded. To explain the issues I will, without further ado, identify the three marks. They were set out in paragraph 1 of the Decision which I reproduce here (they are listed out of numerical order as they were in the Decision, the sensible reason no doubt being that the first mark listed was the subject of the main analysis in the Decision, and the one mark against which the Opposition failed):
a) Application No 3 019 362:
Trade Mark:
Mark description:
The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.
b) Application No 3 019 361:
Trade Mark:
Mark description:
The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.
c) Application No 3 025 822:
Trade Mark:
The colour purple (Pantone 2685C), shown on the form of application.
Thus:
i) The first mark (“'362”) is for the colour purple designated by Pantone number and by reference to that shown on the form of application, “applied to the whole visible surface of the packaging of the goods”.
ii) The second mark (“'361”) is for the colour purple, defined in the same way, “applied to the packaging of the goods”. The key difference compared to '362 is that there is no requirement for application to the whole visible surface, and the mark description is silent as to how much of the visible surface of the packaging must have purple applied.
iii) The third mark (“'822”) is for the colour purple, defined in the same way, simpliciter. There is no reference to the packaging of the goods at all.
Each of the Marks was applied for in respect of (paraphrasing for simplicity) milk chocolate and drinking chocolate in Class 30.
THE ISSUES ON THIS APPEAL
By the Decision, the Hearing Officer rejected the opposition against '362 (relevant reasoning at [45] – [52]) and upheld it against '361 and '822 (reasoning at [53] and [54] respectively). I digress to note that Mr Purvis criticised the fact that the Decision had only a single paragraph in respect of each of the Marks in respect of which the opposition succeeded. I reject the criticism; the Hearing Officer had set a lot of background relevant to all the Marks earlier in the Decision, the reasoning on '362 was relevant to the decision on the other two of the Marks, and the points for decision were, in my view, short ones.
I was referred to a number of authorities during the course of submissions. In my view, the critical ones are the decision of the CJEU in Libertel Groep BV v. Benelux-Merkenbureau (Case C-104/01) (“ Libertel”) and the decision of the Court of Appeal in Société des Produits Nestlé S.A. v. Cadbury UK Ltd [2013] EWCA Civ 1174 (“ CoA 2013”).
In Libertel the CJEU decided that “a colour per se, not spatially delimited, may … have a distinctive character within [the provision of the Trade Mark Directive then in force] provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”
The CJEU also held that the latter condition could not be satisfied merely by reproducing on paper the colour in question; there had to be a designation using an internationally recognised code. On that basis, the specific mark under consideration, which was just “orange” (with a depiction of an orange rectangle) failed. The use of Pantone or RAL designations, as in the Marks in the present case, has overcome this specific problem and it therefore does not affect the situation before me.
CoA 2013 was an earlier round of the dispute between Cadbury and Nestlé over purple as a trade mark for chocolate. In it, the Court of Appeal overturned the decision of HHJ Birss QC (as he then was), who had himself dismissed an appeal against a decision of the Principal Hearing Officer, and held that the mark in question, which was for goods essentially the same as those that the Marks would cover, did not meet the requirements for registration, because it was not a “sign”. The mark under consideration was described as:
“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.”
And the application also showed a block of purple, as is the case with the Marks.
As will become apparent, the focus of the Court of Appeal's reasoning in rejecting the mark was the “predominant” option. It appears probable from the Court's reasoning that the “whole visible surface” option was not objectionable in itself, and indeed that was the reason why the Decision was in favour of '362.
So the two issues which arise on this appeal are:
i) Does '361, by not referring to the degree of application to the packaging, avoid the problem that the Court of Appeal found afflicted the mark in CoA 2013?
ii) Is '822, which is in what I will refer to as “ Libertel form” (i.e. colour per se as defined by Pantone designation but without reference to the manner of use) capable of being a sign, or does it also run into the problems found by the Court of Appeal?
I think these issues can be determined by reference to the reasoning of the Court of Appeal in CoA 2013, binding on me, having in mind Libertel as a key part of the background. I think they are also very narrow issues, albeit important ones, and of almost pure law. Mr Hughes submitted that the assessment under s. 3(1)(a) and s. 1(1) must depend on all the circumstances of the case. I agree with that at a very high level, but it is hard to see why the arguments on e.g. '822 would not apply to, at least, any consumer goods.
I remind myself that I am only considering s. 3(1)(a) and s. 1(1). Colour marks present formidable hurdles to applicants in relation to acquired distinctiveness under s. 3(1)(b) but those are not the matters the subject of this appeal.
I further remind myself that how colour marks are to be analysed when infringement or relative grounds are decided is also not something that I am deciding or considering, at least not in any detail: some appreciation of the policy issues at a broader level is necessary, as the case law considered below shows. Mr Hughes for the Comptroller expressed a desire for guidance on these matters, but I do not think it is appropriate arising out of a limited-scope and (I cast no blame) somewhat late intervention to do any more than...
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Case Analysis: Nestlé v Cadbury
...law, and overcome the objections of others? Société des Produits Nestlé v Cadbury UK Ltd (Comptroller-General of Patents intervening) [2022] EWHC 1671 (Ch) Case Following the handing down of a decision in the UKIPO over yet more applications by Cadbury, in which one application finally over......