The Prague High Court has overruled recent decisions of the Czech Industrial Property Office which denied trademark registration for the distinctive lilac colour associated with the Milka chocolate brand.
The plaintiff, Kraft Foods Schweiz Holding AG sought cancellation of the decision of the Industrial Property Office to refuse trademark registration for the lilac colour associated with the Milka brand. The plaintiff already owns International Trademark 644 464 for the colour, which is registered in 45 countries.
Despite the fact that the lilac shade is used exclusively by the plaintiff for its Milka brand products, and even though the plaintiff submitted evidence show that 84% of Czech consumers associate the shade with its goods, the office held that a trademark could not be used to distinguish the plaintiff's goods or services.
The High Court found that the office's decision was based on the results of material examinations that did not fulfil the requirements of the Trademark Law. Under the Trademark Law, the result of a material examination must clarify (i) the obstacle under Section 2(1)(1) that hinders registration, and (ii) the fact, findings and assessments from which this conclusion follows. The office failed on both aspects, in that it provided vague and incomplete reasons for its decision (neither the first instance decision nor the appealed decision included any facts or considerations from which the office's reasoning could be inferred).
Under Czech trademark law, trademarks consisting of colour shades are not explicitly excluded from registration. Moreover, goods or services may acquire sufficient distinctiveness for registration through at least two years' use, provided that the use began prior to the filing of the application for trademark registration.
The court recognized the need to distinguish between primary colours, which must be protected due to their limited number, and exact shades of a given colour, which are registrable.
In considering the distinctiveness of the Milka lilac colour, the court cited long-term use of the colour in association with Milka products. The court noted that Milka chocolate is the second most popular brand in the Czech market and that, according to research, many Czech children believe that cows are lilac in colour due to the influence of Milka packaging with its lilac cow. The court reasoned that the use of this particular colour by another chocolate manufacturer (or of another product in the market) would lead to consumer confusion and impact considerably on public and private law in terms of, for example, unfair competition, consumer protection liability for damages and administrative law regulating the marketing of food products.
The court found that the lilac colour guarantees the identity of the origin of the goods offered to consumers and performs the function of a trademark. The court noted that the colour has always been associated with the word mark MILKA and thus has acquired an individual distinctiveness. In its decision, the court ruled that it is appropriate to consider European practice in this field (ie, the registration of distinctive colours as trademarks and the fact that Czech trademark law was passed in compliance with the EU Harmonization Directive).
The decision clarifies the fact that specific shades of colours may be registered as trademarks, provided they they have attained a 'distinctive character'. This may be acquired through use of the colour for more than two years, provided that use began before the filing of the application for registration.
For further information on this topic please contact Karel Cermák at Cermák Horejš Myslil by telephone (+420 2 9616 7401) or by fax (+420 2 2494 6724) or by email ([email protected]).