Date: 19 April 2016
On 18 April 2016, The High Court dealt a further blow to Cadbury's attempt to gain monopoly on the colour purple as a trade mark for their chocolate.
Cadbury, owned by snack food multinational Mondelez, mounted a last-ditch effort to retain existing UK registered trade mark rights following a ruling by the Court of Appeal in 2013, which found that Cadbury had previously filed a trade mark application for the same colour in overly broad and imprecise terms.
Cadbury sought to save its existing registration for the same flawed description by applying to the UKIPO to have its existing registration re-characterised retrospectively as a "series" in the hope that the ambiguous part of the description would be deleted, leaving a valid trade mark.
Mr Baldwin QC, sitting as a Deputy Judge of the Chancery Division, dismissed Cadbury's appeal against the UKIPO's decision to refuse that application. He noted that there was no provision in UK law that would allow such a late amendment. The trade mark covered an unknown number of signs which are not part of any series so a request to delete part of the original description could not be entertained.
The Court also noted that permitting the late amendment would circumvent the rules requiring full and stringent examination of trade mark applications, which protect the public interest in ensuring that unduly broad monopolies are not granted.
Société des Produits Nestlé S.A. participated in the appeal as an intervener and were represented by RGC Jenkins & Co (now Maucher Jenkins). In its decision, the High Court adopted Nestlé's position and rejected Cadbury's approach.
Angela Fox commented, "we are delighted with this outcome, which vindicates Nestlé's position that the public and businesses have an interest in knowing the extent of monopoly rights that might be asserted against them. Only rights which are clearly defined should be accorded protection and a bad mark cannot be resuscitated by abusing the 'series' marks provisions."
Joanne Ling (Senior Associate) and Angela Fox (Partner) represented Nestlé in its application for intervention, as well as in the previous Court of Appeal proceedings in Société des Produits Nestlé S.A. v Cadbury UK Ltd  EWCA Civ 1174.
A copy of the judgment can be found here: Cadbury UK Limited v Comptroller General of Patents, Designs and Trade Marks and Société des Produits Nestlé S.A.  EWHC 796 (Ch).