LVMH’s champagne orange faces a setback
The well-known “Veuve Clicquot” wine trademark, owned by the notorious champagne house LVMH group, was at the center of a complex legal battle in defense of a distinctive characteristic of its products: the orange shade of its bottles label.
This case shed light on the strict probatory standards requested to verify the “secondary meaning”, that is the distinctive character acquired through use of originally not-distinctive signs.
The “troubled” registration of Veuve Clicquot’s “Orange”
In order to be registered a trademark must have a “distinctive character”, that is the capacity to make the goods and services of a company distinguishable from those of other economic actors.
Signs lacking of intrinsic distinctiveness, such as colors or simple and descriptive shapes, usually cannot be registered as trademarks. However, European and national laws grant exceptions: even these signs can be protected when they fulfill the function of a trademark, that is when a color shade (or the combination of colors) is suitable to distinguish the good or service provided by the company (for example the Tiffany blue, Coca-Cola red, Milka purple, Barbie pink and Ferrari red).
Usually, the distinctive character is determined by a massive use of the sign on the market, in a way that the target audience would associate a specific product or service to a precise color (or combination of colors) as originating from a specific company, the so-called secondary meaning.
On February 12th 1998, Maison Veuve Clicquot applied for the registration of a figurative trademark before the European Union Intellectual Property Office (EUIPO), claiming protection for a particular shade of orange, choosing to not make any reference to the “Pantone’s Process Book”, but associating the application with the scientific definition of that shade.
The examiner clarified that the distinctive sign was not a color trademark per se, but a colored figurative trademark and that, if the application for the trademark registration referred to a color, the applicant should have selected the box “other” instead of the box “figurative trademark”. The second commission of appeal, by decision of November 20th 2022 (proceeding R 246/2000-2), pointed out that the application form should have been interpreted as an application to protect a color trademark, annulling the decision of the examiner and referring the case to the latter to verify if the trademark had acquired distinctive character due to its use.
That being said, only with decision of April 26th 2006 (proceeding R 148/2004-2), the trademark application was published in the Official Bulletin no. 37/2006 on September 11th 2006 and the trademark under exam was registered on March 23rd 2007 with no. 747949. The office granted the registration for class 33 “champagne wines”, affirming that the prolonged use had made the color acquire the capacity to identify the company’s champagne.
The judgment of the Court of the European Union
Lidl, which uses a similar color to market its champagne wine bottles in many retail stores, contested this registration with an appeal based on art. 263 TFEU, asking for the annulment of the decision of the EUIPO fourth commission of appeal issued on August 16th 2022, arguing that the orange color had not acquired such distinctive character in the whole European Union through a prolonged use. The argument was based on the absence of evidence sufficient to demonstrate the perception of that color as indicator of the commercial origin by the public in the whole European Union.
On March 6th 2024, the Court of the European Union has therefore annulled the decision of EUIPO (case t-652/22) that confirmed the validity of the orange trademark of Veuve Clicquot. The judges rejected the exceptions of Lidl concerning the scientific definition of the color, stating that the digital sample of the color met the requirements of the “graphic representation” imposed by the trademark registration regulations.
Nevertheless, the Court found that the evidences submitted by Veuve Clicquot, to show the acquisition of the distinctive character in Greece and Portugal, were insufficient. The information on sales, market shares, advertisement and promotional events did not constitute “direct” evidence of the public perception in those countries; demographic surveys, statements of the trade association and other objective evidences would have been necessary to show the “acquired distinctive character”.
The decision referred the case to EUIPO in order to examine once again the evidences of the distinctive character acquired in the period following the trademark registration.
Future prospectives and advices for companies
The judgment indicates that the company will have to produce sufficient evidences of a “geographically extended acquired distinctiveness”. This case serves as a warning for companies that wants to protect non-distinctive signs such as colors or shapes through “secondary meaning”.
It is essential to conduct specific investigations aimed at validating the perception of the sign as an indication of the commercial origin among consumers in different geographic areas.
The legal battle of Veuve Clicquot for the orange color of its labels of sparkling wines highlights the challenges and complexities in demonstrating the “secondary meaning” for non-distinctive signs. The judgment of the Court of the European Union in 2024 marks an important precedent regarding the probatory standards necessary for such cases.
Companies must be aware of the need to collect strong evidences for each geographic area to effectively protect their trademarks of color and other non-distinctive signs.
Carlo Callea