Benelux
The issue surrounding Chocomel took place in the Benelux. FrieslandCampina, the owner of Chocomel, discovered that the Spanish company Cacaolat, which also markets chocolate milk, had applied for a new trademark registration, adjusting the yellow color of its logo to closely resemble Chocomel yellow. FrieslandCampina filed an opposition and won.
Reputation of Chocomel-yellow
According to the Benelux Office for Intellectual Property (BOIP), FrieslandCampina provided ample evidence that the yellow color has been used consistently for Chocomel in the Benelux for a long time, not only on packaging but also in all advertising materials. This yellow tint has, in the Benelux, gained significant recognition and reputation in relation to chocolate milk. Consumers, upon seeing the Cacaolat brand (even with the word “Cacaolat” on it), would quickly associate it with the well-known Chocomel yellow. BOIP questioned why Cacaolat chose precisely that shade of yellow, suggesting that Cacaolat was simply trying to piggyback on Chocomel’s popularity, which is not allowed. Consequently, no Benelux registration was granted for Cacaolat’s logo.
European battleground
Turning to the battle over Veuve Clicquot’s orange color trademark, the battleground here was Europe, unlike Chocomel’s case which was confined to the Benelux, marking a significant difference. MHCS, the owner of Veuve Clicquot, had successfully obtained a Europe-wide trademark registration for the orange color for champagne. Lidl, keen to use the same orange color for promoting its sparkling wine, initiated a procedure to invalidate Veuve Clicquot’s European registration, and it succeeded.
No acquired distinctiveness in Greece and Portugal
To claim trademark rights for a single color throughout the European Union, you must demonstrate that this color has acquired distinctiveness in all 27 European countries, meaning it is recognized by consumers as a trademark. This is where MHCS fell short. While MHCS could prove the acquired distinctiveness of the orange color for champagne in most European countries, the evidence for Greece and Portugal was deemed insufficient by the European Court. This meant that the color had not acquired distinctiveness in all 27 EU countries, thus no Europe-wide trademark protection could be granted. This is a significant setback for the well-known champagne orange.
Color Trademarks Are Exceptional
Registering a single color as a trademark is exceptional. To obtain such registration, you must always demonstrate acquired distinctiveness. The Chocomel case shows that color trademark protection can succeed in a small market like the Benelux. In the Benelux, Chocomel yellow has become well-established and even has a rputation due to extensive advertising and long-term use. However, for color trademarks in the vast European market, it’s a different story. It is nearly impossible to prove that your color trademark has aquired distinctiveness in all 27 member states. Of course there are some exceptions, like T-mobile’s magenta or UPS’s brown, but they remain rare. I have no doubt that Veuve Clicquot’s famous color orange could easily obtain trademark registration in the Benelux. However, Europe with its 27 countries is, unfortunately, a bridge too far even for such well-known color trademarks.
Bas Kist
