Nullity Action
However, one company that, after receiving a T-Mobile warning, didn’t retreat but instead launched a counterattack is Lebara, which also offers mobile telecom services in the Netherlands. Lebara was unwilling to remove the magenta accents from its website. It hired a lawyer and launched a so-called invalidity action, challenging the Benelux color mark of T-Mobile.
Magenta not distinctive
According to Lebara, the color magenta should not have received a Benelux trademark registration. It is generally undesirable for one company to gain exclusive rights to a single color. Moreover, magenta is already used elsewhere in the telecom sector, so consumers would not necessarily associate this color with T-Mobile. The color trademark is not distinctive, and the registration should be cancelled, Lebara argued.
Established brand
T-Mobile, however, argued that magenta has acquiered distinctiveness. Acquired distinctiveness refers to the phenomenon where a trademark, through long-term use and extensive advertising, gains distinctiveness and is recognized by the public as a brand. To demonstrate this, the Germans provided a large amount of evidence, showcasing the intensive use of magenta. Market research even showed that 60% of respondents in the Netherlands associate the color magenta with T-Mobile.
Trademark registration revoked
Impressive figures, but it was all in vain. On August 23, the Benelux Intellectual Property Office (BOIP) ruled that T-Mobile’s color trademark registration would be cancelled. The crux lies in the fact that this concerns a Benelux trademark registration. If you claim acquired distinctiveness, you must demonstrate that it has occurred throughout the entire protected area, namely the Benelux. However, T-Mobile is not well-known in Belgium and Luxembourg. The company cannot prove acquired distinctiveness in these countries, leading to the downfall of T-Mobile’s Benelux color claim.
Will the European trademark registration follow?
And it’s not just in the Benelux that magenta is under dispute. T-Mobile’s European color trademark is also under attack. This registration is being challenged by the American insurance company Lemonade. The situation is similar to that in the Benelux: Lemonade has been called out by T-Mobile for using the color magenta and is now arguing in legal proceedings that the European color trademark is not distinctive. T-Mobile now faces the tough task of proving the acquired distinctiveness of the color trademark in all European Union countries. After this Benelux ruling it is very questionable whether this will succeed —after all, things are already going wrong in Belgium and Luxembourg. There’s a good chance that T-Mobile’s European color trademark registration will also fall.
Bas Kist
