Validity of Veuve Clicquot's orange mark affirmed

Belgium

The Brussels Court of Appeals has (i) upheld the validity of an orange colour mark owned by Veuve Clicquot Ponsardin (VCP), manufacturer of the famous Veuve Clicquot champagne, and (ii) issued an order preventing the use of this colour for beer (Case 2003/AR/679, June 24 2004).

Belgian beer brewer Emmanuel De Landtsheer launched a new beer called Malheur Brut Reserve in 2001. The beer was sold in champagne-type bottles with a predominantly orange label and in orange carton boxes. In certain newspaper articles and magazines the beer was referred to as "Veuve de Belgique" and "beer's answer to Veuve Clicquot".

VCP and LVMH Fashion Group started court proceedings against De Landtsheer for trademark infringement. They based their claim, among other things, on an orange colour trademark (owned initially by LVMH but transferred to VCP during the course of the proceedings).

The colour trademark was registered in 1992 and initially consisted only of a sample of the colour and the description orange. It was only once the proceedings had commenced that the plaintiffs notified the Benelux Trademark Office that the colour corresponded to the international colour code Pantone 137C.

De Landtsheer counterclaimed for invalidation of the colour trademark, stating that the graphic representation did not meet the requirement of "durability" as laid down in the European Court of Justice's (ECJ) Sieckman and Libertel judgments (see Registrability of smells as trademarks in serious doubt and The future of colour registration is orange). The Brussels Court of Appeals dismissed De Landtsheer's objection, reasoning that "lack of durability" is not a cause of nullity under Articles 3 and 4 of the Community Trademark Directive. Furthermore, referring to Libertel, the court ruled that the lack of durability was overcome by the fact that VCP had added the Pantone 137C code during the course of the proceedings.

The court also rejected De Landtsheer's argument that the colour mark lacked distinctiveness. According to the court, the existence of an ability to distinguish products is sufficient for a sign to be granted the minimum trademark protection of Article 5(1)(a) of the directive (ie, protection against identical signs and signs with differences so insignificant that they may go unnoticed by an average consumer pursuant to the ECJ's decision in LTJ Diffusion - see ECJ interpretation of 'identical' narrows trademark owners' rights). The actual fulfilment of that ability is only relevant when determining the scope of protection beyond Article 5(1)(a). The court considered colours to be pure fantasy signs (except if they are the natural colours of the products to which they relate), which makes them apt for trademark protection, notwithstanding the fact that they do not exist independently from the appearance of the product.

Finally, the court held that the risk of monopolization by one trader of all available colours is purely theoretical, since (i) colour trademark registrations are necessarily limited to a particular shade, and (ii) a large number of shades are available. Third-party interests should only be taken into account when it comes to determining the scope of protection beyond the absolute minimum protection of Article 5(1)(a) of the directive.

Turning to the trademark infringement claim, the court held that champagne and beer are similar from a trademark point of view because it is feasible that a champagne manufacturer might also produce beer. Hence, in the case at hand, there was a risk that the public would be confused as to the origin of a beer with an orange label in the same shade as VCP's orange mark.

The court ordered De Landtsheer to cease the trademark infringement and pay damages.

Michel Draps, Altius, Brussels

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