What a Case Over Veuve Clicquot’s Color Mark Means for Other Brands 

A court in the European Union has remanded a case over a yellow-orange hued trademark owned by Veuve Clicquot. In the latest round of a long-running case over a color trademark, the European Union General Court sent the matter back before the Board of Appeal of the European Union Intellectual Property Office (“EUIPO”) to reconsider whether Veuve Clicquot provided sufficient evidence that the mark was perceived as an indicator of source among consumers in two European Union member states between the time that the LVMH-owned champagne-maker filed its application for registration and the date of registration of the mark.

Some Background: On the heels of the EUIPO granting Veuve Clicquot a registration for the yellow-orange trademark for use on champagne in 2006 (following years of back-and-forth over the mark before the trademark office), Lidl sought to invalidate the registration in 2015, arguing, among other things, that the mark lacks the requisite distinctive character to be registered. This resulted in an August 2022 decision from the EUIPO’s Fourth Board of Appeal, which took the view that the evidence submitted by Veuve Clicquot demonstrated that “a significant proportion of the relevant public was, at the time of the application for registration of trademark, accustomed to the shade of orange [at issue] and that, therefore, there was no doubt that the mark at issue had become distinctive through use made of it … at the time that trade mark was filed.” 

Lidl appealed the Board’s decision, looking to get the General Court to either annul the decision and declare the mark at issue invalid, or alternatively, refer the case back to the Board for reconsideration.

On March 6, the General Court sided with Lidl, finding that, among other things, “in the absence of direct evidence” that the Veuve Clicquot had acquired distinctive character through use in Greece and Portugal, “the Board of Appeal could not, on the basis of the evidence that it analyzed, conclude that the acquisition of distinctiveness through use had been demonstrated to the requisite legal standard in respect of these two countries.” (It should be noted, the General Court stated in its decision, that the Board of Appeal “examined whether distinctive character had been acquired prior to the filing of the mark at issue, that is to say on February 12, 1998, without ruling on whether that character had been acquired between the registration of that mark and the filing of the application for a declaration of invalidity.”)

As such, the General Court is calling on the EUIPO to examine whether sufficient evidence had been provided from the date that Veuve Clicquot filed its application for registration in February 1998 to the date of registration of the mark in 2006 that the yellow-orange mark was perceived as a trademark, in particular in Greece and Portugal.

At the same time, however, the General Court refused to cancel or otherwise invalidate Veuve Clicquot’s trademark registration. “The conditions for the exercise of the court’s power to alter the contested decision [of the EUIPO’s Board] are not met,” the court stated, specifically noting that the Board “did not examine the question [of] whether [Veuve Clicquot’s] trademark had acquired distinctive character through use between its registration and the filing of the application for a declaration of invalidity.” As a result, the court held that it is “not in a position to determine the decision that the Board of Appeal was required to take,” and thus, Lidl’s request for alteration of the Board’s decision must be refused, leaving Veuve Clicquot’s EU-wide color-centric registration in force.

It is worth noting that the General Court’s decision is subject to appeal, and in the event that Veuve Clicquot’s mark is invalidated, the brand would not be entirely out of luck, as the EU-wide mark could be converted into national trademarks in the various EU Member States.

THE BIGGER PICTURE: More significant than a case-specific fight over Veuve Clicquot’s signature hue, the judgment from the General Court “shows, once again, the almost impossible nature of proving distinctive character acquired through use at the level of the European Union,” according to Jérôme Tassi, a partner at Paris-based firm AGIL’IT, who notes that “the burden of proof is so heavy that even such renowned brands cannot prove it despite [making] undoubtedly very significant evidentiary investments.” 

Not the first case to drive home the message that relying on secondary meaning as a basis for amassing and/or maintaining trademark registrations in the EU can be an uphill battle, the registrability of a number of “unconventional” marks has been considered by courts in the EU in recent years, resulting in losses for big-name brands. Taylor Wessing’s Louise Popple noted that a handful of decisions – including those that centered on Louis Vuitton’s checkered Damier Azur pattern, the shape of Dior’s saddle bag, the configuration of Tecnica’s Moonboots, and the shape of EOS’ lip balm packaging, for example – “illustrate that it remains difficult to register non-traditional trademarks, particularly on a pan-EU basis.” 

And not merely an issue for new or niche brands, the geographical scope of evidence of distinctive character acquired through use in the European Union continues to be prove a difficult issue for multi-national brands to successfully navigate. It is worth noting, of course, that registrations for shape or other less conventional marks are not impossible to acquire, and cases that centered on Guerlain lipstick packaging and the shape of the Absolut vodka bottle are indicative of the potential for non-traditional marks to be registered in the EU. 

In light of the complexities of achieving registration for unconventional marks at an EU level, Crowell & Moring attorneys cite a handful of practical points worth considering … 

> Acquired distinctiveness for the purposes must be evidenced throughout the EU. When attempting to demonstrate this, careful planning as regards which Member States will be covered and how to regionalize and/or extrapolate certain Member States, could be key and may become an important consideration for trademark strategy.  

> Greater weight seems to be given to direct evidence by the GC, such as sworn statements from chambers of commerce and industry or other professional associations or public authorities, opinion polls/ market studies, and the use of the mark on the internet. As regards the latter, pursuant to settled case law, significance is given to the top-level domain name of the website concerned and its language. In contrast, advertising campaigns, catalogues and brochures are (merely) indications that the trademark has acquired distinctiveness through use.

> It is furthermore paramount for the trademark applicant or -holders to consider the filing and the form of their trademark, as this should correspond with the use they wish to claim. Important questions are: “Will I actually use the sign as registered?” and “for which goods and services is registration sought and will the trademark be genuinely used for such goods and/or services?” Strategizing on these points prior to registration may help companies to avoid headaches later on.

> If acquired distinctiveness can only be proven in a limited number of Member States, it might be advisable to obtain trademark protection either at a national level or using an International Registration with individual designations in key territories.

The case is Lidl Stiftung & Co. KG v. EUIPO, Case T‑652/22.