Champagne maker wins latest round in Lidl ‘colour mark’ case

The EU General Court has annulled a European Intellectual Property Office (EUIPO) Board of Appeal decision to remit a long-running dispute over a winemaker’s figurative mark.

Winery MHCS, which makes Veuve Clicquot champagne, holds a figurative mark for the colour orange under Class 33 of the Nice Agreement for “Champagne Wines”.

Since its application was first reviewed in 1998, the application has been contested by the EUIPO several times, with the Board of Appeals and Cancellation Divisions going back and forth on whether the mark should be treated as a figurative mark or colour mark.

In February 2020, the EUIPO First Board of Appeal held that MHCS had referred to the mark “on many occasions” as a figurative mark and that it did not meet the criteria for that classification.

In a judgment handed down on September 15, 2021, the General Court said that the First Board of Appeal had infringed MHCS’ right of defence by not questioning the nature of the contested mark.

Therefore, it annulled the First Board of Appeal’s decision and ordered the EUIPO and intervener Lidl to bear their own costs.

Party arguments

MHCS claimed that, in the absence of any dispute, the Board of Appeal had interpreted the mark application as “relating to a figurative mark composed of a clearly defined contour” and in doing so, exceeded the bounds of factual observations.

The EUIPO contended that the board was entitled to examine the nature of the mark in order to determine the scope of the protection sought.

Lidl claimed that the Board of Appeal had jurisdiction to interpret the nature of the contested mark in light of the application form and declare the mark invalid.

The General Court held that the EUIPO department responsible for the register did not rectify the registration of the contested mark as “another mark” or as a “colour mark” instead of maintaining its classification as a “figurative mark”.

The court agreed with MHCS that the First Board of Appeal went “beyond the pleas and arguments submitted by the parties” and did not question the parties on the issue of the nature of the contested mark.

Case history

MHCS first filed a figurative mark application to register the colour orange under Class 33 of the Nice Agreement, covering “Champagne wines” in February 1998.

In July 1998 the examiner at the EUIPO said that the mark did not satisfy conditions necessary for registration as single colours were “devoid of any distinctive character”, dismissing the application in January 2000.

Upon appeal, the Second Board of Appeal held that the application had to be interpreted as referring to a “colour mark”, even though the box for a figurative mark had been ticked on the application form, annulling the examiner’s decision and remitting the case to determine whether the mark had acquired a “distinctive character”.

MHCS’ mark was found to not have a distinctive character by an examiner in December 2003. This decision was annulled again by the Second Board of Appeal in April 2006.

The trademark application was eventually published on September 11 2006 and registered on March 23 2007 under the EU number 747949. It was assigned to MHCS in March 2010.

In November 2015, Lidl filed an application declaring the invalidity of the trademark on the basis of Article 4 of Regulation 2017/2011, on the ground that specifying a colour shade lacked distinctive character.

The Cancellation Division dismissed Lidl’s application, holding that, despite being registered as a figurative mark, it should be treated as a colour mark. Lidl appealed the decision in December 2018.

The First Board of Appeal annulled the Cancellation Division’s decision in February 2020, arguing that MHCS had referred to the mark “on many occasions” as a figurative mark and that the Second Board of Appeal did not have the jurisdiction to reclassify the trademark.

It recalled that colour marks were “devoid of any shape, whereas figurative marks had a clearly defined contour, which influenced consumer perception and had an effect on the distinctive character of the trademark in question.”

The First Board of Appeal remitted the case back to the Cancellation Division for reconsideration, a decision that was appealed to the General Court by MHCS.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox

Today’s top stories

Software patents ‘more successful’ at UKIPO than EPO

Q&A: Shouvik Biswas, Aaron Lukas and Blake Coblentz on the America Invents Act