Cadbury May Preserve Purple Wrapper Rights in UK

Submitted by Jessica Vaianisi.

UK-based chocolate company, Cadbury, was successful in preserving its pending application for the colour purple (Pantone 2685c) in association with milk chocolate.  Nestlé had appealed to UK’s High Court, challenging the UK Intellectual Property Office’s 2008 decision to award Cadbury exclusive use of the distinctive purple for its wrappers, arguing that “colours could not be practically trademarked for commercial advantage.”

Noting that Cadbury has used purple for its Dairy Milk bars since 1914, the High Court in London rejected the appeal, stating that “the evidence clearly supports a finding that purple is distinctive of Cadbury for milk chocolate.”

The ruling means that, barring any further appeals, Cadbury’s application may now proceed to registration for the particular shade of purple for use in association with “milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate”.

This is not the first time we have seen a controversial colour trademark case; last month in the U.S., fashion designer Christian Louboutin won a trademark case against Yves Saint Laurent over the use of red soles on shoes. The District Court overturned an earlier 2011 decision, which said that a colour could not serve as a trademark in the fashion industry.

While colour trademarks are extremely difficult to obtain, these two rulings demonstrate that obtaining the registration of single colour marks requires a high-level of public recognition, where the colour has become analogous with brand.

To view the  UK High Court decision, click here.

Should Colour be Accorded Trade-mark Protection in the Fashion Industry? Louboutin’s “Lacquered Red Sole” Trade-mark in Jeopardy in U.S.

In 2008, shoe designer Christian Louboutin was granted a U.S. trade-mark registration for “a lacquered red sole on footwear” as applied to “women’s high fashion designer footwear” (U.S. Reg. No. 3,361,597).   Louboutin’s red-soled shoes have become famous worldwide, as well as highly sought after by celebrities and fashionistas alike.  However, Louboutin’s U.S. trade-mark registration has recently been challenged by the fashion house, Yves Saint Laurent, which also features red-soled shoes in its fashion collections.  Saint Laurent claims that the use of colour in the fashion industry is intended to please the eye rather than to identify a commercial source.    The U.S. District Court for New York agreed with Yves Saint Laurent and found that the colour red as used by Louboutin is aesthetically functional and therefore not entitled to trade-mark protection.   Judge Victor Marrero found that granting trade-mark protection to a colour in the fashion industry unfairly impacted competition, “cramping what other designers could do while allowing Louboutin to paint with a full palette.”  Surprisingly, the court seems to have ignored the significant customer recognition and acquired distinctiveness of Louboutin’s red soles.  The District Court’s decision suggests that any use of colour in the fashion industry constitutes an aesthetically functional use.  Louboutin has appealed to the U.S. Court of Appeals (Second Circuit), and we will continue to monitor this case as it will have significant implications for fashion designers.  See Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.  2011 WL 3505350 (S.D.N.Y. Aug. 10, 2011).