Author: Jeroen Muyldermans (Altius, Brussels)
InBev Belgium v Brouwerijen Alken-Maes, Court of Appeal of Brussels, 2012/AR/1999, 21 October 2013
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu020, first published online: March 4, 2014
The Court of Appeal of Brussels confirmed a first instance decision accepting the validity of the abstract Benelux colour mark blue owned by Belgian beer brewer Alken-Maes and finding that the mark had been infringed. This decision clarifies the scope of protection afforded to colour marks against use of identical or similar signs.
The unified Benelux trade mark law is governed by the Benelux Convention on Intellectual Property (BCIP). Article 2.1 BCIP, which corresponds to Article 2 of the Trade Mark Directive (TMD), stipulates that a trade mark may consist of any signs capable of being represented graphically, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
The requirements for the graphic representation of a trade mark are that it be clear, precise, self-contained, easily accessible, intelligible, durable and objective (Case C-273/00 Sieckmann  ECR I-11737, para 55). In the context of a colour or colour combination, this implies, among other things, that filing a sample of the colour is insufficient, as this may deteriorate over time. Instead, it is indispensable to designate the colour using an internationally recognized identification code, such as the Pantone Matching System or the RAL Colours system (Case C-104/01 Libertel  ECR I-03793, para 37).
It is generally accepted that, since a colour is not inherently capable of distinguishing the goods, distinctiveness without prior use is impossible except in exceptional circumstances. This limitation can be avoided by showing that the mark has acquired distinctive character through use. If the colour mark has passed the test of familiarization, it may prevent third parties from using identical or similar signs in the course of trade. Those conditions are provided in Article 2.20.1 BCIP (Article 5 TMD).
Alken-Maes which is part of the Heineken group, is one of Belgium's oldest surviving breweries. As early as the 1960s, it began marketing its lager under a trade dress using a distinct shade of dark blue.
The court accepted the validity of the colour mark and upheld the infringement, at least insofar as it was based on the enlarged protection conferred to well-known marks.
First, the court considered whether the colour used by InBev for its beer constituted a sign in relation to that product or, by contrast, a simple property of things or decoration. That assessment, which is a question of fact, depends on the context in which the colour is used as well as the perception of the average consumer of those goods (Case C-104/01 Libertel, para 27). According to the court, the use by InBev Belgium of the colour blue for its beer packaging was done ‘as a trade mark’—that is, with the intention to distinguish the origin of the product. That finding was apparent from the predominant appearance of the blue colour on the cans and bottles, and was not called into question by the presence of verbal elements on the packaging. On the contrary, due to its obvious meaning, the verbal element ‘BLUE’ even strengthened the conclusion the colour was used a distinctive sign.
While there was no discussion of the fact that the sign was used in the course of trade for goods identical to the those for which the mark was registered, it was equally apparent to the court that the colour mark is well known, which was evidenced by its long-lasting and heavy use on the Belgian market, as well as by the associated investments for advertising emphasizing the use of that colour. The recognition that the mark enjoyed among 60 per cent of Belgian consumers was largely sufficient for the mark to be considered as enjoying a reputation in Benelux.
When comparing the mark with the sign, the court, however, refused to accept that both were identical in the perception of the average consumer. Even if that consumer was not likely to display a higher degree of attention in relation to these kinds of fast-moving consumer goods, the difference between the mark and sign, the latter found to be characterized by a gradation of dark and light blue, were not so insignificant that they would go unnoticed (Case C-291/00 LTJ Diffusion  ECR I-02799, para 53). Although not identical, a high degree of similarity between the mark and the sign was undeniable, to the extent that the average consumer of beers, who rarely makes a direct comparison between the products, would be likely to establish a link between the two. The finding that consumers would recall the mark when seeing InBev Belgium's packaging was not called into question by the addition of the well-known mark JUPILER and the bull logo, because these marks were less prominent and visible, especially when seen on the shelves from a certain distance. Because of that, the court also noted that the colour blue retained an independent distinctive role within the compound sign, constituted by the packaging, and could therefore be challenged as such.
As to the different types of injury referred to in Article 5.2 TMD, the court surprisingly did not look into the unfair advantage taken from the repute of the mark, but held that InBev Belgium's trademark use of a highly similar colour was likely to cause detriment to the distinctive character of the colour mark (Case C-323/09 Interflora  ECR I-08625, para 79). That, according to the court, was sufficiently clear from the counter-claim seeking to annul the colour mark for lack of distinctive character by relying on examples of other beers using a shade of blue.
Finally, InBev Belgium could not rely on any due cause for the infringing use. The alleged prior use of the colour blue which it claimed was deemed to be irrelevant by the court because the shade of blue used for the previous packaging—before its rebranding—was different and was also used in a less distinctive way.
Colours are widely used on packaging and send a powerful, attention-grabbing signal that it is often processed more rapidly by the human brain than verbal or figurative signs, especially when perceived at a distance. A single colour or colour combination can thus fulfil the function of a trade mark: to guarantee the origin of goods or services to consumers or end users by enabling them unambiguously to distinguish particular goods or services from others.
Belgian case law demonstrates that, once registered, a colour mark is a powerful tool. Infringements are often easily demonstrated and accepted by the court on the grounds that a colour mark which has acquired distinctiveness through use tends to be regarded as having acquired a reputation. The factors to consider in examining whether a mark is well known are identical to those for the process of familiarizing the relevant public. Marks that are well known because of the use made of them enjoy a broader scope of protection and may be relied on to prevent third parties from using similar or identical colours, even if that is done in combination with other (sometimes well-known) marks.
This colour mark ruling is the latest in a series of decisions in which Belgian courts have ruled in favour of the trade mark owner. Earlier cases included the blue-silver colour mark of Red Bull (Pres Commercial Court of Brussels, 8 June 2011, A/10/06233), the heavenly blue colour mark of Rizla (Court of Appeal of Brussels, 21 March 2011, 2008/AR/2318) and the orange colour mark of Veuve Clicquot (Pres Commercial Court of Brussels, 4 November 2011, A/11/04774).