Victory for Mondelez as court recognises distinctive character of colour lilac mark

In Judgment No Pz-2758/11-3 (December 17 2013, published only recently), the Croatian High Commercial Court has ruled that Kras' sale of sugar-free menthol sweets in a lilac packaging infringed a trademark for the colour lilac (International Registration No 644464) registered in the name of Kraft Foods Schweiz Holding GmbH - part of Mondelez International Group - for chocolate and products containing chocolate. It is the first time that a court in the region has recognised the distinctive character of the colour lilac. The court also held that the colour lilac mark was a trademark with a reputation, but that Mondelez had not proven that the sale of sweets in lilac packaging could harm the mark’s reputation or distinctiveness.  

Kraft Foods owns an international trademark for the colour lilac, which is valid in Croatia and is used on a range of Milka chocolate products, as well as on products made by other companies in co-operation with Mondelez (eg, Ledo ice cream).

Kras is a well-known Croatian producer of confectionary products. Among its products are sweets sold in a lilac packaging featuring the word ‘Mentol’ (commonly used to designate a menthol/mint taste).

Mondelez sued Kras for trademark infringement and unfair competition. Mondelez claimed that the colour used on Kras’ sweets was very similar to the colour lilac for which it owned a registered trademark and that the goods were similar. Further, Mondelez claimed that its colour lilac mark had a reputation in Croatia and thus enjoyed extended protection, even against dissimilar goods. Mondelez submitted a survey showing that 89% of respondents recognised the mark in Croatia. Mondelez also argued that Kras’ use of the colour lilac on its confectionary products was contrary to good business practice and could confuse consumers as to the origin of the goods, thus constituting an act of unfair competition.  

In its defence, Kras argued that there was no similarity between the products, pointing out the various elements that featured on the packaging of its sweets. Further, Kras argued that the goods were not similar, as sugar-free menthol sweets are not similar to chocolate and are purchased by different consumers (ie, those with health issues who have special dietary requirements). Kras also challenged the reputation of the colour lilac mark as such, arguing that it was the MILKA mark which had a reputation in Croatia, not the colour lilac per se. Further, Kras argued that its packaging was not similar conceptually to Mondelez’s Milka products - for example, the Milka chocolate features white mountain tops and a cow, which suggest that the chocolate is made with alpine milk, while the mountain tops on Kras’ sweets evoke the freshness of mountain air.

The court of first instance dismissed Mondelez's lawsuit.

Mondelez appealed to the court of second instance, which ruled in Mondelez's favour as far as trademark infringement was concerned. The court held that:

• the packaging of Kras’ sugar-free menthol sweets uses various shades of lilac, which were similar to Mondelez’s trademark;

• the goods at issue were similar, as sweets and chocolate are both confectionery products; and

• the relevant consumers were consumers of chocolate (which can contain sugar or be sugar-free), who were likely to make an association between Kras’ lilac packaging and Mondelez's colour lilac.

Further, the court held that the colour lilac mark was a trademark with a reputation, which enjoyed extended protection against dissimilar goods. However, the court held that Mondelez had not sufficiently demonstrated the potential damage to the mark’s reputation or distinctiveness; therefore, Mondelez’s claim of infringement of a trademark with a reputation was dismissed.

This is a huge victory for Mondelez, which has been trying to defend its colour lilac mark all over the world. The judgment cannot be appealed, but Kras has filed a motion for revision (an extraordinary legal remedy) with the Supreme Court of Croatia. The battle continues.

Gordana Pavlovic and Maruska Bracic, Cabinet Pavlovic, Brussels and Belgrade

Cabinet Pavlovic advised Mondelez in this case