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Future’s bright, but it might not be orange

There has been an interesting decision recently at the second highest level in Europe relating to a trade mark dispute relating to the colour orange for champagne.

This article reviews the European decision and provides commentary on the Australian approach to trade mark protection for colours.

The authors have particular expertise in protecting IP rights in the food & wine sector.

European trade mark dispute

Lidl are involved in a long running trade mark dispute against Veuve Clicquot (now part of the Moet Hennessy Champagne Service “MHCS” group) regarding the colour orange for trade mark protection for champagne.

The dispute has so far twice gone up the European General Court which is the second highest level of Court in Europe (with only the Court of Justice sitting above the General Court).   A second decision from the General Court here was handed down on 6 March 2024.

Over 26 years ago Veuve Clicquot applied for an EU trade mark in Class 33 for goods relating to “Champagne wines” with the following sign filed as a “figurative mark” as per the application form:

Orane1

Over the following years one of the issues in dispute was whether the applicant ticked the right box on the application form.   Is the applied for trade mark actually a “figurative mark” or should the applicant have ticked the box “other” on the application form?

To give an example, Starbucks have different types of trade mark protection. 

Starbucks have trade mark protection for the “word mark” “STARBUCKS”.

In addition, Starbucks have both “semi-figurative” trade mark protection (see below left) which includes both graphics and words and also “figurative” trade mark protection (below right) which is a graphical representation only i.e. does not include any words:

Starbucks

The application included a scientific definition of the colour for which protection was sought.

Prosecution history

The trade mark was initially rejected by the Examiner who was then overturned on Appeal with the Board of Appeal referring the case back to the Examiner for further consideration.  The Examiner then rejected the case for a second time but on a second appeal, the Board of Appeal overturned the Examiner a second time allowing the application.  The application was finally registered some nine (9) years after initial filing.

In 2015 Lidl filed an application seeking a declaration of invalidity which was unsuccessful before the initial Cancellation Division.  In 2018 Lidl appealed the Cancellation Division’s decision to the Board of Appeal which duly annulled the Cancellation Division’s decision and referred the matter back to the Cancellation Division for further consideration.

However, at this point, Lidl got fed up with the constant backwards and forwards and filed an Appeal to the General Court against the Board of Appeal’s decision.

By judgment of 15 September 2021 the General Court annulled the decision of the Board of Appeal on the ground that the Board of Appeal had exceeded its jurisdiction.

Another Lidl subsidiary then filed in 2021 another declaration for invalidity of the mark.

A further Board of Appeal then dismissed the appeal before the EUIPO in a decision dated 16 August 2022.

Lidl then appealed a second time to the General Court seeking an annulment of the Board of Appeal’s decision dated 16 August 2022.

Decision of General Court dated 6 March 2024

The General Court has made various interesting observations in their decision.

In order for the trade mark to be valid it is necessary for the trade mark owner (MHCS) to show that the sign had acquired distinctiveness through use as of the filing date (12 February 1998) as it was common ground that the trade mark lacked inherent distinctiveness.

Importantly, according to the Court, acquired distinctiveness must be proven in all Member States in which the sign lacks inherent distinctiveness which in the present case is the whole of the EU.

Lidl focussed upon two countries where the evidence was the weakest namely Portugal and Greece.

The Court distinguished between primary and secondary evidence.

Secondary evidence are things like sale figures, market share data etc.

However, what the Court is really interested in is primary evidence i.e. evidence which shows whether the public perceived the colour as an indication of the commercial origin as of the filing date.  This may include surveys, market studies or evidence from professional bodies.

In short, secondary evidence alone is insufficient.

The Court has remitted the case back to the Board of Appeal in order to assess whether or not MHCS’ trade mark has acquired distinctiveness between the registration date and the date that Lidl filed an application for a declaration of invalidity.

Takeaway points

  • Colour trade marks can potentially be very powerful.  If you think about it, you will probably associate the colour purple with Cadbury and the colour red with Coca Cola and Qantas.
  • Equally, colour trade marks should be viewed akin to pharmaceutical patents, both very powerful, but equally something which is likely to be opposed by generic companies.
  • Accordingly, if you are filing a colour trade mark you really need to know what you are doing and to understand that you may need to have extensive supporting evidence. 
  • If you get into a multi-jurisdictional trade mark dispute and/or a EU wide trade mark dispute, then market survey evidence may be required in respect of several countries, and the associated costs could be significant.
  • It makes sense to prepare two sets of evidence: (i) a first set of evidence relating to market survey data as of the date when the trade mark application was originally filed; and (ii) a second set of evidence relating to market survey data as of the date when the application was effectively opposed e.g. by a competitor seeking a declaration of invalidity.
  • It is one thing seeking to protect a single colour which can be defined e.g. by referring to a Pantone colour number.  However, it could be very difficult to define sufficiently scientifically a colour pattern such as a rainbow where the colours fade into each other? 
  • Might it be possible rather than attempting to give a scientific definition of a complex colour pattern to state instead how the complex colour pattern might be generated?

 

Colour trade marks in Australia

The application process to obtain a colour trade mark registration in Australia also requires the applicant to demonstrate a significant amount of evidence of use of the particular shade/combination of shades of colours, that they are claiming distinguish their particular goods and/or services.

In relation to the abovementioned Veuve Clicquot, Veuve does have it’s colour registered as a trade mark in Australia under Registration 704779: 

 

Orange 2

One can see from the history of prosecution of the application, it was not a simple task to have the colour accepted for registration as a trade mark.  The mark was filed in 1996 but acceptance was not finally secured until 1999.  Evidence of use would have been filed, to show that this particular colour has become distinctive of the champagne goods of the trade mark owner and the colour alone can identify the goods, as a badge of origin.

Other examples of Australian food and wine colour trade marks:

Cantarella

Registration 996565:  covering “coffee; sugar” (Cantarella Bros Pty Ltd)

Purple

Registration 1120622 for “block chocolate; boxed chocolate; chocolate bars” (Cadbury UK Limited)

Green

Registration 888415 for “preparations for making milk beverages being chocolate and malt based preparations” (MILO – Nestle)

Teal

Registration 1754249 for “beans and products predominantly containing beans, including baked beans” (Heinz)

Further advice

If you would like further advice relating to protecting your IP in the food & drink sector and/or regarding trade mark protection in general then please contact the authors:

Geraldine Rimmer, Principal                    geraldine@mbip.com.au

Phil Jeffrey, Senior Counsel                      phil@mbip.com.au