Cadbury UK Ltd v The Comptroller General of Patents Designs And Trade Marks

Factual and Procedural Background

Cadbury UK Limited ("Cadbury") applied to register a purple colour mark (Pantone 2685C) for chocolate packaging, resulting in registered trade mark number 2020876A ("the 876 mark"). The application initially described the mark simply as "the colour purple" and later included wording that the colour was applied either to the whole visible surface or was the predominant colour of the packaging. Cadbury did not indicate on the application form that this was a series of marks. The registrar accepted the mark after an objection on distinctiveness was overcome.

Following a related Court of Appeal decision in Société des Produits Nestlé SA v Cadbury UK Limited ("Cadbury 1"), which invalidated a later similar mark (the 879 mark) due to unclear graphical representation, Cadbury sought to amend the 876 mark by deleting the "predominant colour" wording from the description. The registrar refused the application, reasoning that the 876 mark was not registered as a series of marks and that deletion of part of the description was prohibited under section 44 of the Trade Marks Act 1994 ("the Act"). Cadbury appealed to the High Court, which dismissed the appeal. Cadbury then appealed to the Court of Appeal.

Legal Issues Presented

1. Whether the registrar may accept an application to alter a registered trade mark by deleting part of its description that renders it invalidly registered.
2. Whether the 876 mark should be construed as a registration of a single mark or as a series of marks under section 41 of the Act.
3. Whether a mark can be deleted from a series under Rule 28(5) of the Trade Mark Rules 2008 even if the series registration was not validly made.

Arguments of the Parties

Appellant's Arguments (Cadbury)

• The 876 mark comprises two alternative descriptions (whole surface and predominant colour), effectively constituting two marks.
• There is no statutory restriction on the number of marks covered by a single registration, whether or not expressly registered as a series.
• The absence of indication on Form TM3 that a series was applied for does not preclude the registration from being treated as a series if that is the proper interpretation.
• The predominant colour wording, although wide, is limited to the colour purple and does not affect distinctiveness.
• Rule 28(5) permits deletion of any mark in a series regardless of whether the mark was validly registered as part of the series.

Respondent's Arguments (Registrar)

• The 876 mark is a registration of a single mark with a defective description, not a series of marks.
• The mark does not meet the substantive or procedural requirements of section 41 for series registration.
• The application did not indicate it was for a series, a requirement that serves to alert the registrar and public to the nature of the monopoly.
• Allowing Cadbury's approach would make the trade mark registration system unworkable and undermine clarity and certainty.

Intervener's Arguments (Nestlé)

• The Act and rules only contemplate decisions on series registration at the application stage.
• The registrar's decision to register as a series or single mark is final and cannot be challenged subsequently.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by framing the principal issue as whether the 876 mark should be interpreted as a single mark with an imprecise description or as a series of two or more marks. It rejected the appellant's reliance on the presence of the word "or" in the description as insufficient to establish the existence of a series. The court emphasized that the description, when read as a whole, covered every conceivable case where purple is predominant, including the whole surface case, thus describing a single mark with a vague and imprecise scope.

The court noted that the registration did not comply with the procedural requirements for series registration, such as indicating the number of marks in the series on the application form and providing representations of each mark. The court also found that the purported "predominant colour" alternative covered a multitude of materially different signs, failing the requirement under section 41(2) that marks in a series must resemble each other in material particulars and differ only in non-distinctive ways.

It was further reasoned that allowing the deletion of part of a single mark's description, as sought by Cadbury, would conflict with the statutory prohibition on altering registered marks under section 44 of the Act. The court rejected the appellant's argument that multiple marks could be registered within a single registration outside the framework of a series, finding no statutory basis for such a registration.

Overall, the court concluded that the 876 registration was an attempt to register a single mark with a description that lacked the clarity and precision required by law and that the deletion application could not be entertained.

Holding and Implications

The Court of Appeal DISMISSED the appeal.

The court held that the 876 mark is a registration of a single trade mark with an imprecise and unacceptable description, not a series of marks. Consequently, the proprietor cannot delete part of the description as if removing a mark from a series. The decision affirms the strict requirements for clarity, precision, and procedural compliance in trade mark registration and alteration. No new precedent was set beyond the direct effect of denying Cadbury's application to alter the registered mark.