Recently we have witnessed a legal diatribe over the famous trademark “Veuve Clicquot,” in the orbit of the LVMH group, a champagne company, in an attempt to protect a distinctive aspect of its products: the orange tonality that appears on the labels of its bottles. The case at hand concerns the complex evidence required to verify so-called “secondary meaning,” i.e., when distinctive character is achieved by virtue of the prolonged use over time of an originally non-distinctive mark.

THE COLOR MARK

As is well known, one of the legal requirements for being able to obtain a valid registration is distinctive character, i.e., the ability to differentiate the goods or services of an enterprise from those ones in the same market segment. Usually colors lack this requirement, so registration of such distinctive signs is never granted. There have been some exceptions in the past, recall Ferrari red, Tiffany blue, Coca-Cola red, Milka purple, which have been deemed legitimate in distinguishing a company’s original product from those of various competitors in the market. One of the main ways in which this can happen is certainly the wide diffusion of the trademark in the target market, the success and notoriety of the product, distinguished by that trademark, until it becomes in the consumer’s mind natural to associate that color with that specific product originating from that one manufacturing company. This legal institution, of jurisprudential creationili, is called secondary meaning.

Now the well-known champagne house la Maison Veuve Clicquot has also filed its own version of orange with the EUIPO in Alicante (Spain), deliberately avoiding describing the Pantone/RGB code, etc., but indicating only a description. As a result, for all intents and purposes, it was not a color mark, but a figurative distinctive sign that featured a specific color, thus filling in a different box in the EU office’s forms. At this point, the matter passed into the hands of the Board of Appeals, which ruled, in No. R 246/2000-2), clarifying that, for all intents and purposes, it was a potential color mark, thus, rejecting the application for registration suggested by the Examiner who had taken charge of the file. The latter then verified that, by virtue of the use of the distinctive sign, the said mark had acquired the requisite distinctive character, so it was then registered on March 23, 2007 under No. 747949.

THE COURT OF THE EUROPEAN UNION

A third company, namely Lidl tried to raise objection as it sells its bottles of sparkling wine in the chain of supermarkets, etc., by filing an Appeal under Article 263 TFEU, seeking an annulment of the Fourth Board’s decision, issued in 2022. The Lidl company argued that the aforementioned orange color would not purchase secondary meaning in all individual countries.In essence, it attempted to challenge the wide geographical spread and the deficiency of the evidence provided by Veuve Clicquot.

The Community Court has annulled the order issued by the EUIPO (Case T 652/22) that had given the green light to the possible registration of the color mark, with reference to the quantity and quality of the evidence provided in the two countries of Greece and Portugal, which the Court said was considered partial. In fact, Veuve Clicquot’s promotional-advertising activities are only indirect evidence that cannot attest to the irrefutable acquisition of secondary meaning, the actual knowledge of users in those two European countries.

SUGGESTIONS FOR COMPANIES

The European court has made it clear to companies wishing to attempt to register their color mark that, in advance, they will have to preempt extensive and widespread evidence throughout the EU in order to be able to persuade EUIPO of the actual acquisition of secondary meaning for their distinctive sign. It certainly turns out not to be easy to carry out individualized investigations in order to have certain proof that the consumer has, indeed, perceived that the distinctive sign recalls the entrepreneurial source of a product in all the individual countries of the European Union. The above judgment certainly represents a significant jurisprudential precedent, especially with regard to what concerns the quantity and quality of the evidentiary framework that will have to be provided by the applicant.

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