Société des Produits Nestlé S.A. v Cadbury UK Limited

Mr Justice Meade:

Introduction

This is an appeal from a decision of 12 April 2019 of the Hearing Officer, Louise White (“the Decision”) in an opposition brought by Nestlé against three marks applied for by Cadbury in class 30, each concerning, in slightly different ways, the colour purple (“the Opposition”, “the Marks”). The Opposition failed in respect of one of the Marks and succeeded against the other two. It will be important to my reasoning to describe the Marks individually, and I do that below.

Nestlé and Cadbury settled their long-running dispute over the use of purple as a trade mark for chocolate, after the Decision but well before this appeal came for hearing. So Nestlé is no longer a party, although it observed the hearing before me, which was a remote one.

Nestlé in fact filed two oppositions to the Marks. The first, the Opposition, was under s. 3(1)(a) of the Trade Marks Act 1994 (“TMA 1994”) on the basis that the Marks did not fulfil the requirements of a “sign” under s. 1(1) TMA 1994. The second was under s. 3(1)(b), which would have turned on whether the Marks had acquired distinctiveness. The second was stayed to await the result of the first, with the result that the Decision concerned only s. 3(1)(a) and whether each of the Marks could validly be a sign.

With Nestlé having dropped out of the picture, the Comptroller-General of Patents, Designs and Trade Marks (“the Comptroller”) sought to intervene in the appeal to help the Court in relation to an area of law which it submitted (and I agree) was uncertain and of some importance.

The Comptroller’s application to intervene came very close to the hearing of the appeal before me, owing to an administrative error which I accept was entirely unintentional. Cadbury very sensibly did not oppose and I made an Order permitting the intervention. As a result I received helpful written and oral submissions from Mr Dominic Hughes of Counsel for the Comptroller, which were entirely in the spirit of the Comptroller’s proper role and function as an intervener.

Cadbury was represented by Mr Iain Purvis QC.

The Marks

The appeal raises two closely related issues, one on each of the Marks against which the Opposition succeeded. To explain the issues I will, without further ado, identify the three marks. They were set out in paragraph 1 of the Decision which I reproduce here (they are listed out of numerical order as they were in the Decision, the sensible reason no doubt being that the first mark l