By Lydia DePillis
When you see a chocolate bar in a royal purple wrapper, who do you think made it?
If you answered “Cadbury,” you’ve bought into a decades-long marketing campaign, in which the British chocolate maker sought to make purple synonymous with its products.
In 2004, it even won a trademark on the colour, winning the exclusive right to use it on candy bars and drinking chocolate in the United Kingdom.
Rival confectioner Nestle, however, took issue with that — the trademark was too vague, it argued, and could be abused.
On Friday, the Court of Appeal agreed, bringing Cadbury’s purple reign to an end.
The sweet purveyor, now owned by American conglomerate Mondelez International, is weighing whether to appeal to Britain’s Supreme Court.
“Our colour purple has been linked with Cadbury for a century and the British public has grown up understanding its link with our chocolate,” Cadbury said in a statement.
That wasn’t enough for Appeals Court Judge John Mummery, who reasoned that Cadbury’s trademark was just too broad, and “lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration.”
The ruling doesn’t negate the ability to register colours as trademarks in Britain, where the law for colour trademarks is similar to the laws in the United States.
It does, however, stand as a rebuke for a branding strategy that has become standard practice in recent years.
While the US Patent and Trademark Office doesn’t keep statistics on the number of such trademarks it has registered, protecting a colour.
After a logo and a slogan — can give companies an extra edge in a competitive marketing environment.
“In today’s market where everything’s so cluttered, if you have a really clear colour, it certainly helps you cut through all that,” says Josh Gerben, a Washington-based intellectual property attorney.
Getting one, though, can be tricky.
The first colour trademark in the United States was granted in 1987 to Owens Corning for its “Pink Panther”-coloured insulation.
After a number of challenges, in 1995 the Supreme Court ruled that registrants would have to prove not just originality, as with a logo or a slogan, but also “secondary meaning” — that the public already identifies the trademarked colour with a specific product.
Big companies can do that by providing evidence that the colour has been integral to their marketing strategies, and providing consumer surveys that show a widespread understanding of what brand the colour represents.
United Parcel Service, for example, can easily defend its trademark on the colour brown for a mail carrier — but it wouldn’t be able to use it against a clothing company that decided to make hats in the same shade.
Tiffany & Co has trademarked the robin’s-egg blue shade for its gift boxes, but a soda maker could still use it free and clear. In a recent case, Christian Louboutin found its trademark on red soles only applied when the rest of the shoe was another colour.
T-Mobile, on the other hand, might have a case if it could prove that AT&T was actually using the shade of magenta it’s trademarked for a phone service, as it tried to do in a lawsuit filed at the end of August (the case is in the process of settling).
That was the situation with Nestle and Cadbury:
Two of the same kind of company battling over the use of the same colour.
Cadbury argued that it needs the legal monopoly on royal purple because impostors have been trying to pass off inferior products as the real thing.
But the court worried that the broad trademark could give Cadbury an unfair competitive advantage, which is something that judges are starting to take into account.
“I think there’s been some pushback because of concerns about competition,” says Lisa Ramsey, a intellectual property professor at the University of San Diego School of Law.
Especially with Cadbury’s purple, she noted. “It’s associated with the Queen.
Why should any one company be able to invoke the history of the royal family? People are starting to look a little more at the public policy.”
WP-Bloomberg
