Is Veuve Clicquot’s orange a colour or a figurative mark?

As background to a (lengthy) case leading to an interesting decision of the General Court, Veuve Clicquot Ponsardin (the applicant) applied to register a colour mark, by ticking the box “figurative mark” in the application form to the then OHIM (now EUIPO). The Examiner, in rejecting the application due to lack of distinctiveness, also informed the applicant that it should have ticked the box “other” if it sought to claim protection for a colour per se.

Further to a ping pong between the Examination Division the Second Board of Appeal, the trade mark was eventually registered as a figurative mark. The decision is interesting because it raises an often overlooked question in trade mark law: what are the effects of trade mark classification, with particular regard to less conventional marks?

Background

In 1998, SA Veuve Clicquot Ponsardin (the applicant) applied to register the following mark as an EU trade mark (EUTM):

The Applicant had stated under the heading “Colour claimed” that protection was claimed for the colour orange with a scientific definition of that colour and proceeded to tick the box “figurative mark” in the application form.

Registration was sought for goods in Class 33 (champagne wines) of the Nice Classification.

The Examiner dismissed the application on the ground that it was devoid of distinctive character within the meaning of what is now Article 7(1)(b) of the EU Trade Mark Regulation (EUTMR). The examiner stated that, if the subject of the application was a colour, it would follow that the box ‘other’ should be ticked on the application form instead of the ‘figurative mark’ box.

In 2002, the EUIPO Second Board of Appeal stated that the standard application form had to be interpreted as referring to an application seeking protection for a colour mark, even though the box for a figurative mark had been ticked. It annulled the examiner’s decision and remitted the case back to the examiner to determine whether the trade mark had acquired a distinctive character through use in accordance with what is now Article 7(3) EUTMR. The distinctive character was further disputed but eventually (in 2007) resulted in the mark being classified and subsequently also registered as a figurative EUTM in the registry.

In 2015, Lidl Stiftung & Co. KG (the intervener) filed an application for a declaration of invalidity of the contested trade mark on the basis of what is now Article 59(1)(a) EUTMR, read in conjunction with Article 7(1)(a) and (b) the same regulation. The intervener argued that, by specifying the colour shade using a scientific definition, the EUTM lacked distinctive character.

In 2018, the Cancellation Division dismissed the application for a declaration of invalidity and the intervener subsequently appealed to the EUIPO First Board of Appeal (the board).

In 2020, the board annulled the Cancellation Division’s decision and remitted the case back to it. It considered that:

• the ‘figurative mark’ box had been ticked on the application form,
• the applicant had referred on many occasions to a figurative mark in colour and the Second Board of Appeal had, of its own motion, interpreted the application as relating to a colour mark,
• the applicant had never requested that the application be amended and the trade mark had been registered as a figurative mark, and
• the Second Board of Appeal did not have jurisdiction to reclassify the trade mark of its own motion.

The board then recalled that colour marks are devoid of any shape, whereas figurative marks clearly have defined contour, which influences consumer perception and has an effect on the distinctive character of the trade mark in question. According to the board, the choice of the nature of the mark was a matter for the applicant: choosing one classification in lieu of another could not be regarded as a manifest error, since the contested mark could be considered, according to its depiction, only as a figurative mark claiming a specific colour.

Furthermore, the applicant never requested that the contested mark be reclassified in the EUIPO’s database. As a result, the amendment in the classification of a mark was such as to influence the analysis of its distinctive character.

In light of the above, the board took the view that it was necessary to annul the Cancellation Division’s decision and remit the case back to it for reconsideration, in order to allow the parties to adapt their observations to take account of its interpretation and ensure that the right of the defence was respected.

The applicant subsequently appealed to the General Court.

The General Court’s decision

The applicant submitted before the General Court that there had been an infringement of:

• Article 95(1) EUTMR, on the ground that the Board of Appeal went beyond the scope of the factual observations made by the parties, and
• Article 94 EUTMR and of Article 41(2) of the Charter of Fundamental Rights of the European Union (the Charter), in that the contested decision infringed the principle of sound administration, including the obligation to state reasons, and the rights of the defence.
  
  

Infringement of Article 95(1) of the EUTMR

The General Court considered that, pursuant to Article 95(1) EUTMR, when considering absolute grounds for refusal/invalidity, the EUIPO examiners and the EUIPO Boards of Appeal are required to assess the facts out of their own motion in order to determine whether the mark in question falls within one of the grounds for refusal laid down in Article 7 of that regulation.

In the context of a declaration of invalidity and by virtue of the presumption of validity of a registered mark, the EUIPO’s obligation under Article 95(1) EUTMR to examine out of its own motion the relevant facts, which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EUTM carried out by the examiners of the EUIPO and by the EUIPO Boards of Appeal during the procedure for registration of that mark. As the registered EUTM is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity of that mark to prove before the EUIPO the specific facts which call the validity of that trade mark into question.

In the present case, the question of the nature of the contested mark was not an argument or plea submitted by the parties before the First Board of Appeal within the meaning of Article 95(1) EUTMR. Since the department responsible for the register wrongly failed to rectify the registration of the contested mark as ‘another mark’ or as a ‘colour mark’ instead of a ‘figurative mark’, the question of the nature of the contested mark was not a matter of fact or of law raised by the parties, nor did that question concern a relevant fact or essential procedural requirements.

It followed from the foregoing that the board had gone beyond the pleas and arguments submitted by the parties and, in so doing, exceeded its jurisdiction.

Infringement of Article 94(1) of the EUTMR and Article 41(2) of the Charter

The second sentence of Article 94(1) EUTMR states that decisions of the EUIPO ‘shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments’. In this sense, Article 94(1) enshrines the general principle of protection of the rights of the defence. In that regard, the General Court considered that it had to be borne in mind that observance of the rights of the defence is a general principle of EU law, guaranteed furthermore by Article 41(2)(a) of the Charter.

It was apparent from the documents before the General Court that the board had not questioned the parties, in particular the applicant, on the issue of the nature of the contested mark which it raised of its own motion. In so doing, it had infringed the applicant’s rights of defence, guaranteed by the second sentence of Article 94(1). As a result, the General Court annulled the board’s decision.

Comment

It is a fact that colour marks are devoid of any shape whereas figurative marks have a clearly defined contour. The difference between the two types of marks influences consumer perception and affects the assessment of the distinctive character of a mark.

This said, the choice eventually made has a decisive impact on the assessment of registrability and validity of the mark at issue. This is also why it is very important for potential applicants to carefully consider which heading their trade mark should fall under.