The article was first published on E.I.P.R., Issue 1 © 2019 Thomson Reuters and Contributors

Colour trade marks are among the most controversial kind of trade marks. The Court of Venice recently adjudicated a case concerning use of the colour orange used, respectively, on Champagne and Prosecco. The court acknowledged that a colour mark is inherently non-distinctive and it may only acquire distinctiveness through intensive use. As the evidence showed acquired distinctiveness, and since champagnes and prosecco target a public with an average level of attention, which is not particularly high, the Court held for infringement.
However, the court denied that acquired distinctiveness is equal to reputation.

Introduction
Colour trade marks, per se or in combination, are undoubtedly among the most controversial kind of trade marks, and on many occasions the European Court of Justice has been called to rule on their nature and to the requirements which are necessary for their protection.1
In the case at hand, decided by the Court of Venice,2 at issue was precisely the alleged violation of a colour trade mark3 (“the orange trade mark”) owned by the French company MHCS, producer, among others, of the renowned Veuve Clicquot and Moët & Chandon champagnes.

Facts
On 2014, MHCS learnt that a prosecco producer, Masottina SpA, had placed on the Italian market the prosecco wines “Cuvée Dolce” and “Chardonnay Frizzante”, whose bottles used on the label, collar and packaging an orange colour very similar to the orange
trade mark of MHCS and used on the bottle of Veuve Clicquot champagne.
Shortly afterwards, MHCS found on the market another bottle of prosecco, also produced by Masottina SpA, “Prosecco Treviso extra dry”, characterised by a cream label with golden upper edge and black lower edge and with a writing, in capital letters on the neck of the bottle,
allegedly similar to that used on the bottle of Moët & Chandon Brut Impérial.
MHCS, along with its sister company, Moët Hennessy Italia SpA (collectively, the plaintiff), filed an action against, Masottina SpA (the defendant), claiming violation of its registered and non-registered right on the orange trade mark, unfair competition and lookalike practices.
The plaintiff alleged that the defendant’s use of a similar “orange” background on its labels and on the neck collars of “Chardonnay frizzante” and “Cuvée Dolce” violated the registered and non-registered orange trade mark, and took unfair advantage of its reputation, with consequent damages to its distinctive character, pursuant to art.20(1)(b) and (c) of the Italian Industrial Property Code4 and Article art.9(b) and (c) of the Council Regulation 207/2009 of 26 February 2009.5 Moreover, the systematic imitation of MHCS’s distinctive signs, including the shape of the champagne bottle, constituted unfair competition, being acts of free-riding on the reputation and the distinctive character of the orange trade mark, by virtue of art.2598 of the Italian Civil Code.6 The plaintiff finally alleged that the defendant, by
reproducing in its Prosecco Treviso Extra Dry, a cream-based trade dress rather similar to the one used on the bottle of Moët & Chandon Brut Imperial, was unfairly misappropriating the reputation of MHCS’ champagne, and violated the common principles of professional
fairness.
The defendant, after providing evidence that it has been using an orange label for more than 10 years and that use of the orange colour was largely diffused in the wine market, argued that a risk of confusion should be excluded, taking furthermore into consideration that the
orange colour used on Masottina’s bottle and MCHS’s orange trade mark corresponded respectively and approximately to different Panton codes, i.e. Panton 158 and Panton 137, which are per se different shades of the same colour.
In addition, the defendant, without explicitly counterclaiming for the invalidity of orange trade mark registrations, and pointing out the troubled procedure of registration with EUIPO of the orange trade mark, argued that the presence of other elements of its labels such as
wine denominations, symbols and design were sufficient to exclude a likelihood of confusion and any act of unfair competition.7 Finally, it raised doubts about the validity of the orange trade marks because of an insufficient description which rendered it “indeterminable”.8

Judgment
The Venice Court, in its assessment of the infringement of the orange trade mark, applied established EU case law on the assessment of likelihood of confusion, according to which the assessment must be valuated globally, taking into consideration the level of consumers’
attention, their distinctive and dominant components, the similarities between the goods and services and the overall impression created by the marks depending on their visual, aural or conceptual similarities.9
The Venice Court thus first analysed the relevant public and its level of attention, and, differently from another Italian court,10 held that champagnes and wines target a public with an average level of attention, which cannot be considered particularly high.11
The Court then turned to the distinctiveness of the orange trade mark, and acknowledged that a colour mark is per se inherently non-distinctive,12 as was the case for the orange trade mark, which was in fact initially refused by the EUIPO.
However, the court acknowledged the EUIPO Board of Appeal had recognised that the orange trade mark had acquired distinctive character through intensive use13.

Furthermore, in a subsequent decision rejecting an invalidity action against the orange trade mark for lack of distinctive character,14 EUIPO held that MHCS had largely demonstrated that its mark has been the object of massive advertising campaigns, including the appearance
in journals, books and events where the orange colour was emphasised as symbol of the champagne Veuve Clicquot, in such a way that consumers confer on this colour the function of immediately identifying the champagne Veuve Clicquot.
Finally, the court noted that in the proceedings in question, the plaintiff put forward substantial documentation proving advertising investments and events, targeted at the general public, demonstrating the large distribution of the orange mark, ensuring its presence not only in dedicated winery shops or specialised magazines, but also in supermarkets and commonplace magazines, so that the plaintiff not only had demonstrated the acquisition of the distinctive character in the registration proceedings and in the invalidity proceedings,
but also that, thanks to such extensive marketing campaigns, the orange trade mark continued to maintain its distinctiveness.
Therefore, as the orange trade mark had become distinguishable as an indication of origin for champagnes, and considering that consumers rely on the imperfect recollection of a trade mark, perceiving it as a whole, without remembering its single elements or slight shade
of orange colour, the court found that consumers seeing an orange colour on the label of a bottle of wine would immediately associate that bottle of wine with Veuve Clicquot, without noticing (or paying enough attention to) different “shades”15 or other elements placed on the
bottle or the labels. Neither were the presence of other elements such as wine denominations, symbols and design capable of excluding a likelihood of confusion.

Hence the court found that the labels of “Cuvée Dolce” and “Chardonnay frizzante” infringed the orange trade mark.16 In addition, their use constituted an act of unfair competition and free-riding of the renowned Veuve Clicquot champagne. However, the Venice Court denied
imitation of the trade dress of Moët & Chandon by the bottle of “Prosecco Treviso Extra Dry”. Considering the limited degree of choice on the type and position of the label on a bottle, and the large number of winery products in the market, it was necessary to exclude the possibility
of recognising any particular distinctiveness to a “cream” colour label, a neutral colour, nor could the position of the producer’s name on the neck on the bottle be considered particularly distinctive. Therefore, not having provided evidence of massive marketing investment or a
high recognition among the public of Moët & Chandon’s trade dress (which instead had been proved for the Veuve Clicquot), the court held that the imitation of some of the characteristics of the Moët & Chandon wine by the defendant’s “Prosecco Treviso Extra Dry” did not
constitute unfair competition practice.

Comment
Interestingly though, the Venice Court rejected the plaintiff claims based on art.9(c) of the EUTM Regulation (unfair advantage/dilution).17 In particular, it refused the plaintiff equation “acquired distinctiveness=reputation” argument based on the same evidence which had been
proffered to establish acquired distinctiveness.
The Venice Court noted that a colour mark may only acquire distinctiveness through use. Once such mark has acquired distinctiveness, the law “certainly requires something more than what was enough to confer distinctiveness to a sign that in itself lacked it” to achieve reputation. In other words, while a certain percentage of recognition is necessary to acquire distinctiveness, a higher degree is necessary to achieve reputation.
Therefore, although the evidence showed how the intense use and advertising campaigns conducted by the plaintiff had (initially) enabled the orange trade mark to acquire distinctive character, subsequent similar activities were necessary to maintain the distinctiveness of the
orange trade mark in the consumers’ perception, given also that the use of an orange colour is otherwise common in various market sectors. Without any further evidence, thus, no reputation could be recognised.
While this conclusion appears correct, it is unclear what level of evidence would have been necessary in order to obtain a finding of “reputation” for a colour mark, and whether the Venice Court would have granted the extended protection ex art.9(c). Nonetheless, this case
serves to show the difficulties that any court might encounter when assessing the scope of protection to be conferred to colour trade marks outside the narrow limits of the goods/services on which they are actually used and are recognised by consumers.
In conclusion, all colours being equal, some colours are more equal than others, but just a tiny bit.

***

* Fabio Angelini, Of Counsel; and Sara Parrello, Junior Attorney, Bugnion SpA, Rome.

1 From Libertel Groep BV and Benelux-Merkenbureau (C-104/01) of 6 May 2003, to Red Bull v EUIPO (C-124/18 P) of 29 July 2019.
2 Case No.2355/2018 of 19 December 2018.
3 The Italian registration No.744510, was filed on 12 March 1996 and granted on 30 March 1998, designating “Beers; mineral and aerated waters and other non-alcoholic
drinks; fruit drinks and fruit juices; syrups and other beverage preparations” in class 32 and “alcoholic beverages (excluding beers)” in class 33, only indicated that protection was requested for the colour “orange”. The CTM (now EUTM) No.747949, which was filed on 12 February 1998 and granted on 23 March 2006, , following the demonstration of acquired distinctiveness for champagne wines in class 33, designated “Champagne wines” in class 33, was so described: “Protection is claimed for the colour orange for which the scientific definition is as follows: trichromatic co-ordinates / colour characteristics: x 0.+520, y 0.428 – diffuse reflectance 42.3% – dominant wavelength 586.5 mm – excitation purity 0.860 – colorimetric purity: 0,894.”

4 Article 20(1) of the Italian Industrial Property Code states that the rights of the proprietor of the registered trade mark shall consist in the right to make exclusive use of the trade mark. The proprietor shall have the right to prohibit third parties, without his consent, from using the trade mark in the course of trade:
“(b) a sign which is identical with, or similar to, the registered trade mark in relation to the same or similar goods or services, where, because of the identity or similarity of the signs and the identity or similarity of the goods or services, there is a likelihood of confusion on the part of the public, which may also consist of a likelihood of association between the two signs;
(c) a sign which is identical with, or similar to, the registered trade mark in relation to goods or services, even if not similar, if the registered trade mark has a reputation and if the use of the sign, even for purposes other than to distinguish the goods or services, without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”
5 Council Regulation 207/2009 art.9(1) states that “A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: … (b)any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; … (c) any sign which is identical with or similar to the Community trade
mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark”. This is now art.9(2)(b) and (c) of Regulation 2017/1001.
6 Article 2598 of the Italian Civil Code states that subject to the provisions that concern the protection of distinctive signs and patent rights, anyone who engages in acts of unfair competition: “(1) Uses names or distinctive signs capable of producing confusion with names or distinctive signs legitimately used by others, or slavishly imitates a competitor’s product, or fulfils by any other means acts likely to cause confusion with the products and the activities of a competitor; (2) Broadcasts information and evaluation about the products and the activities of a competitor, which may determine its disrepute, or steals the merits of the products or the company of a competitor; (3)
Directly or indirectly uses any other mean not comply with the principles of professional fairness and able to damage other people’s company”.
7 Not least, as the defendants remarked, because of the difference in price, appeal and of the average consumers of prosecco and champagne which excluded that champagne and prosecco could be considered as “similar” products, as held by the Turin Court in decision No.5478/2015 in proceedings No.10376/13, where the court, in evaluating the infringement of the orange colour mark by another prosecco producer, Mionetto SpA, had excluded the likelihood of confusion on the basis, among other things, of the high level of consumer’s attention for champagne wines.
8 Under EU laws, the validity of a EUTM is presumed, and invalidity actions can only be lodged with EUIPO or be pleaded by counterclaim (art.99(1) of Regulation 207/99, now art.127 of EU Regulation 1001/2017). Thus, the court could not and did not analyse whether the orange trade mark was invalid for being not sufficiently clear and precise (see below).
9 The Venice Court explicitly cited Koscher + Wuertz Gmbh (T-445/12) EU:T:2014:829.
10 Turin Court, see supra at footnote 6.
11 The court held: “The particularity of the color/brand and the high degree of exposure thereof in the advertising to the public interested in (wines) is such as to induce in the public a form of automatic reactivity, so as to associate the color “orange”, to “Veuve Clicquot” with great immediacy, on the subject of wines. In this way, it can also be said that the mark was brought to knowledge of such a wide consumer audience, interested in the product, that the degree of attention as a whole, cannot be described as particularly high”. However, this argument seems somewhat unconvincing when applied to determining the “level of attention” of the average consumer. The colour red
is often associated with Ferrari sport cars (see for instance at https://magazine.ferrari.com/en/cars/2018/03/20/news/ferrari_colors_rosso_portofino_rosso_corsa_racing
_red-38043/ [Accessed 31 October 2019]) which are also known for being quite expensive. The fact that Ferrari’s sport cars are usually advertised with red livery does not mean or reasonably indicate that the degree of attention of consumers shopping for sport cars with a red livery is “average“ or “not particularly high”. On the contrary, given the cost involved, the degree of attention will be likely be higher than average.
12 cf. Libertel (C-104/01) EU:C:2003:244 at [66]: “In the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific.”
13 Case R 148/2004-2.

14 Decision No.8666/2015.
15 This conclusion formally echoes Libertel (C-104/01) EU:C:2003:244, but it appears that the Venice Court misunderstood its holding. In Libertel, the CJEU observed that
the number of colours that consumers are capable of distinguishing is limited, because they are rarely in a position directly to compare products in various shades of colour.
It follows that the number of different colours that are in fact available as potential trade marks to distinguish goods or services must be regarded as limited (at [47]). Thus,
the CJEU observed that the possibility of registering a trade mark may be limited for reasons relating to the public interest, and as regards the registration as trade marks of
colours per se, the fact that the number of colours actually available is limited means that a small number of trade mark registrations for certain services or goods could
exhaust the entire range of the colours available. For the court, such an extensive monopoly would be incompatible with a system of undistorted competition, in particular
because it could have the effect of creating an unjustified competitive advantage for a single trader (at [54]) and is against the public interest in not unduly restricting the
availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought (at [55], emphasis
added). Although the Libertel case concerned an ex parte proceeding and how Trade Mark Offices should treat applications for colour trade marks, still the fact that the
Venice Court seemed to have recognised that the defendant’s orange was of a different shade and yet assumed that consumers would not notice it, proves the point made
by the CJEU. Perhaps, considering the CJEU’s concerns over the creation of extensive monopoly and undistorted competition, the Venice Court should have given more
relevance to the fact that the orange colour was placed by the defendant on prosecco wines and not on champagne wines (the only good on which the plaintiff had shown
acquired distinctiveness and for which registration had been finally granted in 2007) and thus excluded an expansion of the protection granted by the orange trade mark
registration beyond champagne wines.
16 It is to be noted that the Venice Court decision was issued some eight months before the widely reported Red Bull decision cited above, and three months before Oy
Hartwall Ab (C-578/17) EU:C:2019:261 of 17 March 2019, where the CJEU had held that where the application is accompanied by a verbal description of the sign, “that
description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic
representation of a trade mark or give rise to doubts as to the subject matter and scope of that graphic representation” (at [39]). As mentioned above, the defendant did not
counterclaim for invalidity in light of the fact that the representation of the orange trade mark does not allow the subject-matter and scope of the protection sought to be
clearly and precisely determined. However, had it done so, it might have been interesting to see what the Venice Court would have said. As also indicated in the later Red
Bull decision—which upheld the invalidity of two EUTM colour-combination registrations, both registered by evidence of acquired distinctiveness (like the orange trade
mark) already with the decision in of 24 June 2004, Heidelberger Bauchemie GmbH (C-49/02) EU:C:2004:384, the CJEU had held that: “Colours or combinations of colours
which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to
a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark where it has been established that, in the
context in which they are used, those colours or combinations of colours in fact represent a sign, and the application for registration includes a systematic arrangement
associating the colours concerned in a predetermined and uniform way” (at [42], emphasis added). It is arguable whether or not the orange trade mark complies with such
requirements, especially after the Red Bull decision, which reiterated the necessity for colour marks (and their description) to be self-contained, clear and precise, because
the absence of such information would not permit the consumer to perceive and recall a particular combination, thereby enabling him to make further purchases with
certainty, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark.
17 See supra, footnote 5.