Corks were surely popping at the HQ of MHCS (producers of Veuve Clicquot and other liquid luxuries) after the Court of Venice’s decision (n. 2355/2018) that MHCS’ registered trade mark for the colour orange Pantone 137 used on Veuve Clicquot labels had been infringed.

Masottina SpA was marketing prosecco with labelling of a similar colour and MHCS alleged that this infringed its trade mark, took unfair advantage of, and diluted its reputation, and damaged the colour’s distinctive character.

In assessing trade mark infringement the Court considered the likelihood of confusion between the brands, factoring in the similarity of the products and the level of attention consumers pay to them, the distinctive and key components of the products, and the general impression created by their visual or conceptual similarities. The Court held that consumers pay only average attention when purchasing Prosecco or Champagne, and therefore that they are likely to remember trade marks as a whole, without remembering singular elements like the exact shade of orange.

The Court accepted that colours are inherently non-distinctive, but that in fact Veuve Clicquot’s specific colour orange Pantone 137 had acquired distinctiveness through intensive use. MHCS adduced evidence of the colour’s use since the 1800s and its incorporation in intense and widespread marketing campaigns. It also relied on a prior finding of acquired distinctiveness by the EU Intellectual Property Office in a failed invalidity action against the trade mark. Accordingly MHCS’ trade mark had been infringed, and an injunction was issued preventing any further production or promotion of the offending bottles, as well as the destruction of those already in existence.

However, damages were not awarded as the Court rejected MHCS’ claim that Masottina’s conduct took unfair advantage of or damaged the reputation of Veuve Clicquot’s registered trade mark, holding that while MHCS’ evidence proved that the colour had acquired distinctiveness through use in respect of the relevant goods, the evidence which established acquired distinctiveness was insufficient to establish the necessary reputation in the mark. The Italian Court found that something more than the evidence of distinctiveness of this countourless colour mark was required to establish that the mark also had the necessary reputation (under Article 9(c) EU Trade Mark Regulation).

Unfortunately the Court did not expand on what additional evidence may be required. As is so often the case, the devil is in the detail. Owners of single colour marks and other marks which rely on evidence of acquired distinctiveness to obtain registration should not assume that such evidence will support a claim to reputation in the mark. They must address the issue explicitly and provide evidence which clearly demonstrates both distinctiveness and reputation.