Veuve Clicquot colour trade mark about to be cancelled?

Trade marks that lack inherent distinctiveness and were only registered on the basis of acquired distinctiveness must be enforced rigorously in order to prevent them from losing their ability to indicate the commercial origin. This is particularly true for abstract colour trade marks.

Enforcement usually invites counterattacks on the validity of the trade mark. In such cases, the absolute grounds for refusal have to be assessed entirely anew, even if the trade mark was registered decades ago and the claim of acquired distinctiveness was confirmed by the Board of Appeal (‘BoA’) of the European Union Intellectual Property Office (‘EUIPO’).

A cautionary example of such a situation is the recent General Court judgment in Lidl Stiftung v EUIPO – MHCS (Nuance de la couleur orange) (T-652/22) concerning the orange colour trade mark for the Veuve Clicquot champagne.

Background

On 12 February 1998, SA Veuve Clicquot Ponsardin (the predecessor of MHCS) applied for EU trade mark no. 747949 covering ‘Champagne wines’ and the following sign:

The trade mark was filed as a ‘figurative mark’ in the application form. The section ‘Colour claimed’ contained the following statement:

Protection is claimed for the colour orange for which the scientific definition is as follows: trichromatic co-ordinates / colour characteristics: x 0.520, y 0.428 – diffuse reflectance 42.3% – dominant wavelength 586.5 mm – excitation purity 0.860 – colorimetric purity: 0,894.

The examiner of the EUIPO held that it was not an abstract colour mark but a figurative mark and refused registration for lack of distinctiveness (Art. 7(1)(b) Community Trade Mark Regulation, ‘CTMR’). Upon appeal, the BoA found that the trade mark had to be considered an abstract colour mark and referred the case back to the examiner to assess whether it had acquired distinctiveness through use (Art. 7(3) CTMR).

The examiner rejected the application again but, upon appeal, the BoA held that MHCS’ predecessor had established acquired distinctiveness through use. The trade mark was registered on 23 March 2007. The history of the registration has been covered here.

Lidl Stiftung & Co. KG (‘Lidl’) filed an application for a declaration of invalidity arguing that MHCS’ trade mark was not represented in accordance with (Art. 4 CTMR) and lacked distinctiveness (Art. 7(1)(b),(3) CTMR). The EUIPO and the BoA found that MHCS’ trade mark complied with Art. 4 CTMR and acquired distinctiveness through use at the filing date (Art. 7(3) CTMR). Lidl filed an action before the General Court.

The General Court’s decision

The General Court annulled the BoA’s decision.

Art. 4 CTMR

Since the contested trade mark was filed in 1998, the old CTMR (Regulation (EC) No 40/94) applied. According to Art. 4 CTMR, a sign had to be “capable of being represented graphically”. In the Sieckmann judgment, the Court of Justice of the EU (‘CJEU’) (case C-273/00) held that this required a visual representation of the sign that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. With respect to abstract colour marks, the CJEU held in Libertel (case C-104/01) that a physical colour sample submitted with the trade mark application is not sufficiently durable because the colours can fade with time. The indication of an internationally recognised colour identification code (such as Pantone or RAL) however constitutes a sufficient graphic representation in itself. The same is true for the combination of a physical colour sample and the indication of a colour identification code.

Lidl argued that (1) the colour sample of the contested trade mark does not to comply with the Sieckmann criteria, (2) the colour code indicated by MHCS’ predecessor is not sufficient because it can only be understood by an expert and (3) the sample and the colour code do not correspond to each other since a French trade mark of MHCS having the same description shows a different colour sample.

The Court found that the Libertel judgment only dealt with a physical sample of the colour printed on paper, which may deteriorate over time. MHCS’ predecessor filed the colour sample in a digital format, which cannot deteriorate. Therefore, the colour sample in itself sufficed to meet the conditions of Art. 4 CTMR.

Regarding the description, the Court found that it does not have to fulfil the requirements of Art. 4 CTMR in itself, including the Sieckmann criteria. Rather, the description must be considered together with the graphic representation.

Concerning the correspondence between the colour sample and the description, the Court referred to Red Bull v EUIPO (case C-124/18 P, IPKat here), in which the CJEU found that the description must serve to clarify the subject matter and scope of protection sought. A description may not be inconsistent with the graphic representation of the trade mark or give rise to doubts as to the subject matter and scope of that graphic representation. Lidl did not put forth precisely how the graphic representation contradicts the description. Hence, this plea was rejected.

Art. 7(1)(b),(3) CTMR

It was common ground that MHCS’ trade mark lacked inherent distinctiveness. Lidl disputed the evidence submitted by MHCS showing that the sign acquired distinctiveness through use at the filing date (Art. 7(3) CTMR).

The Court stressed that acquired distinctiveness must be proven in all Member States in which the sign lacks inherent distinctiveness. In the present case, this covers the entire EU. The Court considered primary/direct evidence on the perception of the relevant public to be necessary. This may include surveys or market studies and statements from professional bodies or the specialised public. Information on turnover, sales figures and market shares as secondary evidence were not deemed enough without primary evidence.

Lidl argued inter alia that the evidence for Portugal and Greece was insufficient. MHCS submitted a vast amount of information on sales figures, market share, the duration of use (dating back to the 19th century) and advertising material. Unlike the BoA, the General Court did not consider it sufficient because it did not show whether the public perceived the colour as an indication of the commercial origin. MHCS only submitted secondary evidence but not the necessary primary evidence.

The case was remitted back to the BoA in order to assess whether MHCS’ trade mark acquired distinctiveness between the registration date and the application for a declaration of invalidity (Art. 51(2) CTMR, Art. 59(2) EUTMR).

Comment

First, the decision is an important reminder to review the law applicable ratione temporis. The procedural law is in principle the current law (cf. C-591/12 P, para. 12). The applicable substantive law is determined by reference to the filing date of the contested EU trade mark (application) in opposition proceedings (T-598/18, paras. 17 et seq.), invalidity proceedings based on absolute (C-371/18, para. 49) and relative grounds (T-102/22, para. 13). In revocation proceedings, the filing date of the revocation application is decisive (C-668/17 P, para. 3).

Second, the Libertel judgment may not just be important for the graphic representation of colour trade marks. The argument that physical samples of trade marks deteriorate over time could also be applied to figurative and other types of marks that contain colours. If these types of trade marks have been filed with a physical sample and without defining the colours by an internationally recognised colour code, they might not comply with Art. 4 CTMR.

Third, the judgment shows that establishing acquired distinctiveness across the EU is a high hurdle. If a trade mark registered due to acquired distinctiveness is attacked by an invalidity application, two points in time can be relevant for assessing whether the sign acquired distinctiveness: (1) The application date and (2) the filing of the invalidity application (Art. 51(2) CTMR, Art. 59(2) EUTMR). If the owner of the contested trade mark can show acquired distinctiveness on either date, the invalidity application fails. As the case discussed above shows, it is advisable to file evidence for both. The BoA and the General Court are not bound by the EUIPO’s or BoA’s initial decision that the evidence of use for the filing date is sufficient to establish acquired distinctiveness.

Since MHCS’ trade mark has been filed prior to the accession of several Member States to the EU in 2004, 2007 and 2013, MHCS will not have to establish acquired distinctiveness for these ‘new Member States’ (Art. 209(4)(a) EUTMR).

Fourth, the EU trade mark reform in 2019 made the situation for colour trade mark applicants worse. Prior to the reform, it would have been in line with the Libertel judgment to file only a digital colour sample or indicate a colour code of an internationally accepted colour system. The 2019 reform introduced Art. 3(3)(f) EUTMIR requiring both a colour sample and the indication of a colour code. This does not only discriminate abstract colour (combination) marks vis-à-vis coloured trade marks of a different type (e.g. figurative or 3D trade marks in colours). It also makes it impossible to register abstract colour combination marks where colours fade into each other (think about a rainbow without clear borders between the colours). These types of effects produce so many different colours that they cannot reasonably be described by a generally recognised colour code. Therefore, Art. 3(3)(f) EUTMIR should be abolished and applicants should be given the choice whether to file a digital sample or indicate a generally recognised colour code.

The picture was created with Image Creator from Microsoft Designer.