A not-so-sweet ending to chocolate trademark dispute
Published 12 February 2019
With Easter just around the corner, many of us could expect to receive a Cadbury or Nestle easter egg. Did you know that over the last few years both companies have been involved in legal disputes over trademarking, with Cadbury recently withdrawing a trademark claim over their wrapper colour.
In 1995 Cadbury registered a trademark for the purple colour (Pantone 2685C) used for their ‘chocolate in bar or tablet form’. Cadbury then applied for a new trademark in 2004 to cover additional products such as drinking chocolate and cakes. The wording of the application stated: “…being the predominant colour applied to the whole visible surface of the packaging goods”.
Nestle opposed this application (after all Quality Street and the ‘Purple One’ sweet both have purple packaging) with the Court of Appeal then rejecting the application in 2013. The COA found issue with the wording of the application, stating that the term ‘predominant colour’ was too wide-ranging and lacked “the required clarity, precision, self-containment, durability and objectivity to qualify for registration”
In the judgement, Lord Justice Floyd stated: “If allowed to be the predominant colour rather than restricted to the whole surface, the registration could cover uses of purple in extravagantly different ways… the mark could appear as stripes, spots, a large central blob, or in any other form.”
The decision has demonstrated that the wording of any trademark application is key and must be clearly defined. As of February 2019, Cadbury’s parent company Mondelez International has said it will not launch any further appeal.
Nestle have also been involved in a similar situation; in 2002 the company applied for a trademark in Europe for the three dimensional shape of the 4 fingered KitKat. The KitKat was created by Rowntree (now owned by Nestle) in 1935. Similar 4-fingered chocolate products are also available in Europe, including the Kvikk Lunsj and Milka Leo bar – both made by Mondelez, parent company of Cadbury, who opposed the trademark application.
The case centred on whether the KitKat brand was distinctive enough that it could be recognised by shape alone with evidence that it was recognisable in every European Union country.
Nestle argued that “…by focusing on individual markets, the Court’s decision was incompatible with the unitary character of the EU trademark and the very existence of a single market. The unitary character of the EU trademark implies that territorial borders within the European Union are to be disregarded for the purposes of assessing the acquisition of distinctive character through use.”*
In July 2018 the European Court of Justice finally declared that KitKat shape was not ‘distinctive’ enough to be recognised in all EU member states to warrant trademark protection.
Wattey Kemnay, Legal Executive in MKB Law’s Corporate Team, comments: “The main function of a trademark is to identify the source or origin of the goods and services. For non-conventional marks – such as colour mark, sound, three dimensional shape marks – extra efforts must be made to ensure that the marks meet the required clarity, specificity and precision so that it can be graphically presented.
It is therefore vital to carefully think of your trademark descriptions if you’re registering a mark that isn’t in its traditional form (i.e. logos, words or figurative marks). The description must be clear, unambiguous and sufficient to describe the marks you are seeking to register.”
How We Can Help…
Whether you are starting a new business venture in Northern Ireland, or are an existing business owner with multiple brands already in place, it is essential that you protect your Intellectual Property by registering a trademark.
A trademark is a brand that identifies a specific product or service. The owner of the trademark may be an individual, company or other legal entity. Registering a trademark is done through the UK Intellectual Property Office or the EU Intellectual Property Office.
In addition to the visual and written aspect of your trademark you will also be required to list it within the specific classification that accurately describes the product or service being offered. It is advisable to check the trademark database in advance to ensure there are no conflicts. Once the application has been received by the IPO, it will then be featured in the trademark journal for a period of two months, during which time anyone may object to the application.
The Corporate team at MKB Law provides clients with expert advice and guidance when applying or registering a trademark with the Intellectual Property Office. In the event that your application receives any objections, or if conflicts arise, our team will advise on the best course of action going forward. We will also assist with trademark renewals and any changes that may be required.