Friday, April 22, 2016

Color trademarks in Europe

A tiff between Nestle and Cadbury. SOCIÉTÉ DES PRODUITS NESTLÉ S.A. vs. CADBURY UK LIMITED. [2012] EWHC 2637 (Ch)

The general issue:

In what circumstances can a colour be registered as a trade mark? In this appeal the answer turns on two of the legislative requirements, as judicially interpreted: a trade mark must be (i) "a sign" and (ii) "graphically represented." Applications and registrations of the less conventional kind of subject matter, such as colour, are potentially problematical, especially if they cover a multitude of different visual forms.

Some relevant law:

Libertel Groep BV v. Benelux-Merkenbureau Case C-104/01 [2003] ECR 1-3793

The point was whether Libertel, a telecommunications company, could register the colour orange as a trade mark for telecommunications goods and services. It was held that a colour not spatially defined is capable of being registered as a trade mark, provided that it satisfies the three conditions of (i) being a sign, (ii) being capable of graphical representation, and (iii) being capable of distinguishing the goods or services of one undertaking from another.

As to the 2012 case:

The judge concluded at [63] that single colours are capable of being signs, of being represented graphically and of distinguishing; and that the description of the mark in this case was capable of being a sign within Article 2. He said that the case was covered by Libertel. The wording in the description of the Cadbury's mark had to be considered. It did not have the effect of making the case different from the single colour mark considered in that case.


See also IPKitten post: Cadbury suffers another blow in the battle to protect purple trade marks



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