The Belgian beer battle: the scope of protection afforded to colour marks

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.

Legal context

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 [2002] 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 [2003] 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).

Facts

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.

In 2006, Alken-Maes successfully applied for registration of an abstract Benelux colour mark, claiming protection for the International Pantone Code 2478C in relation to beers.

In 2012, InBev Belgium, part of Anheuser-Bush InBev (the world's largest brewing conglomerate), redesigned its low-alcohol beer, changing from JUPILER BLUE to BLUE BY JUPILER under the following trade dress:

Alken-Maes sought injunctive relief, relying on, among other things, the infringement of its colour mark which it claimed was well known in part of Benelux. Surveys had shown that over 60 per cent of Belgian consumers attribute the distinct shade of dark blue to beer—in particular, to Alken-Maes. Alken-Maes' claim was based on Article 2.20.1(a) and 2.20.1(c) BCIP (corresponding to Article 5.1(a) and 5.2 TMD).

Analysis

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 [2003] 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 [2011] 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.

Practical significance

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).

Copying an assortment of unprotected products

Author: Simon Vander Putten (Altius, Brussels)

Cousins & Co v Melan (docket no 2011/RG/313), Court of Appeals, Mons (Belgium), 29 October 2012, not yet published

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt050, first published online: April 3, 2013

Despite finding that an assortment of luminous ball decorations was not protected by intellectual property rights and could be freely copied, the Mons Court of Appeal held that consumers could be misled by confusing similarities between the website and trade dress of an original business and a competitor selling an almost identical assortment of products, and ordered the competitor to modify these aspects of its business in order to prevent confusion.

Legal context

Figure 1. Illustration of the type
of luminous garlands in dispute
(courtesy of Mélanie Grégoire,
 used with permission.)

The Belgian Market Practices and Consumer Protection Act of 6 April 2010 transposes Directive 2005/29 concerning unfair business-to-consumer commercial practices in the internal market (the ‘Unfair Commercial Practices Directive’), including the prohibition against misleading product marketing (Article 6(2)(a) of the Directive).

Article 95 of the Belgian Act also contains a catch-all provision, according to which ‘all acts contrary to honest market practices by which an undertaking harms or may harm the professional interests of one or more other undertakings are forbidden’. This provision does not arise from EU harmonization.

An injunction to stop any of the acts described above can be claimed in court through accelerated proceedings on the merits.

Facts

French company Cousins sold garlands of lights made of fabric balls, available in different colours. The garlands could be hung from the ceiling or on a stand and could serve as lighting or for mere decorative purposes. Cousins sold the lights through regular shops and its website, where consumers could choose colours to create a custom-made garland.

Considering itself harmed by actions of Melan, a Belgian company that sold almost identical luminous garlands under the trade name ‘Happy Lights’, Cousins sought an injunction to stop these practices, alleging that Happy Lights created confusion by assuming its business concept and by presenting its website and shops in too similar a way and, in doing so, took unfair advantage of Cousins' investment (parasitic competition).

The first instance court held that there were no exclusive rights on the assortment of products sold by Cousins and found no possible confusion between the two businesses' websites and shops. The claimant then filed an appeal.

Analysis

The appeal court first noted that a concept or idea could only be protected under copyright where it was embodied in a concrete form. It then found that the franchise agreement, know-how manual and pre-contractual information documents put forward by Cousins were not embodiments of original creative efforts but only signs of efficient commercial development of and intense marketing efforts surrounding a product with no originality. When analysing the similar assortment of products sold by Happy Lights, the court, like the trial judge, pointed out that Cousins did not invent the items and that copying such an assortment could not be legally criticized in the absence of intellectual property rights, such as a design protection.

The court then analysed the claims under unfair competition law. In line with the first instance court's reasoning, the appeal court stated that, where the alleged acts fall within the scope of the Unfair Commercial Practice Directive and are allowed under it, they cannot be otherwise prohibited under the general clause of Article 95 of the Market Practices and Consumer Protection Act, since the Directive achieves a full harmonization. Thus, if acts likely to harm the commercial interests of an undertaking (Article 95 of the Act) are also likely to affect the economic interests of the consumers, the criteria in the Unfair Commercial Practice Directive will be relied upon to assess whether to prohibit or allow those business activities.

After finding that the alleged acts affected consumers and were thus within the scope of the Directive, the appeal court analysed the alleged misleading character of Happy Lights' product marketing.

The court compared the parties’ websites and noted that Happy Lights used a similar website structure and a substantial amount of Cousins's content, including the online garland creator (in relation to its general aspects, colours, text, fonts and the layout and display of sections). The court also found similarity in the websites’ source codes and noted that there was infringement of the database rights protecting the website, namely the maker's rights that had been transferred to Cousins by the designer.

With reference to the shops, the court found that the decoration, furniture and fittings of Happy Lights’s shops seemed largely inspired by those chosen by Cousins. In particular, the court observed that Happy Lights also used Plexiglas tubes to display the garland balls, a counter with boxes to display the larger luminous balls and orange and chocolate brown colours on the shops' walls. Finally, the court underlined the identical graphic style used to display the product prices.

The appeal court concluded that, by its numerous ‘borrowings’ from Cousins's marketing and its extraction and reusing of the database from the garland creator, Happy Lights created confusion for consumers with an average level of attention, who could have the global impression that the parties' respective activities originated from a single undertaking. The appeal court noted that similarities between the two businesses clearly superseded the differences, including the difference between the parties’ respective trade names (namely ‘La Case de Cousin Paul’ versus ‘Happy Lights’). The court further qualified these unfair practices as parasitic competition because of their accumulation and persistence.

The appeal was upheld and the court ordered Happy Lights to modify its website structure—in particular the online garland creator—and the trade dress of its shops so as to desist from the parasitic copying practices.

Practical significance

This decision confirmed a 2009 Supreme Court judgment that established that, where no intellectual property right protects a product or service, unfair competition law may not be used to fill the gap (Cour de cassation, Belgium, 29 May 2009, Marquet & Cie v Orac, docket no C.06.0139.N, available at www.juridat.be). By this judgment, the Supreme Court stated that, given the principle of freedom of copy, a seller that has made no creative effort and who benefits from the efforts or investment in any economic creation of another seller does not act contrary to fair trade practices. However, the Supreme Court specified that a judge could still consider such an advantage to be illicit in cases where intellectual property rights are infringed, where advertising creates confusion, and in the case of other related illicit acts.

This principle that a product not protected by any intellectual property right cannot, as a rule, have any protection under rules of unfair competition law—rules that apply, in turn, to the accompanying circumstances—has been criticised by some authors for potentially contradicting Article 10bis of the Paris Convention for the Protection of Industrial Property as revised, which requires signatory states to ensure that their nationals enjoy effective protection against unfair competition.

The appeal court of Mons quoted the 2009 Supreme Court decision, adding that a restrictive approach against parasitism had to prevail, given the freedom of competition principle.

The appeal court applied this principle to a whole assortment of products by deciding that it could be freely copied. Thus, the decision highlighted here rightfully considered that the freedom of competition implies the right to take advantage of an entire business model, including the same collection of products and method of sales.

However, the decision reflected that there are also limits to free competition where the accompanying circumstances are either contrary to a legal provision, such as those designed to prevent misleading commercial practices (here, the website and the shops created confusion), or infringe intellectual property rights covering something else than the products themselves (here, the database rights on the website were infringed).

Post-expiry saisie-contrefaçon: Belgium and France diverge

Author: Kristof Neefs (Altius, Brussels)

Sandoz/Daiichi Sankyo, Cour de Cassation (France), No. 09-72946, 14 December 2010

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr025, First published online, 11 March 2011

The French Cour de Cassation has ruled in Sandoz/Daiichi Sankyo that a so-called saisie-contrefaçon, a discovery procedure for intellectual property holders, cannot be awarded after the patent has expired, even when the petitioner seeks evidence of acts that allegedly occurred during the patent's term. This judgment is at odds with case law on saisie-contrefaçon in Belgium and it is discriminatory. Furthermore, it appears it cannot be reconciled with Directive 2004/48 on the enforcement of intellectual property rights.

Legal context



Article 7 of Directive 2004/48/EC requires EU Member States to provide for ‘prompt and effective provisional measures to preserve relevant evidence in respect to the alleged infringement of intellectual property rights’. Such measures can be ordered, if necessary without the other party having been heard, on application by ‘a party who has presented reasonably available evidence to support his/her claims that his/her intellectual property right has been infringed or is about to be infringed’. Long before the deadline for implementation of Directive 2004/48, Belgium and France had a procedure in place, labelled saisie-contrefaçon in each jurisdiction, for discovery of intellectual property infringements. A saisie-contrefaçon can be obtained by means of an ex parte petition, which can be opposed by the targeted party after service and the execution of the discovery measures. The procedures in Belgium and in France are similar.

In Belgium, the saisie-contrefaçon is governed, for all eligible intellectual property rights, by Article 1369bis of the Judicial Code. To be awarded discovery, the petitioner must show that the intellectual property right invoked is prima facie valid and that there are indications that it has been infringed or is about to be infringed. Discovery will then be carried out by a bailiff and a court-appointed expert who may describe all objects, elements, documents or processes which can evidence the alleged infringement or its origins, destination or scope. Anyone ‘entitled to file an infringement action in accordance with the relevant intellectual property act’ can solicit such measures. In Belgium, a saisie can even be awarded on the basis of a foreign patent where are indications that evidence of infringement abroad can be found in Belgium (Belgian Cour de Cassation, 3 September 1999, Docket No. C.960097.N).

The French saisie-contrefaçon for patents is based on Article L615-5 of the French Intellectual Property Code, which holds that ‘any person having the capacity to file an infringement action’ may request the court to have a bailiff and an expert describe, in detail, allegedly infringing products and processes at the targeted party's premises.

Facts

In a dispute regarding pharmaceutical products having the active ingredient pravastatine, originator Daiichi Sankyo (‘Daiichi’) petitioned for a saisie-contrefaçon at the premises of the generic manufacturer Sandoz on 17 March 2009. The relevant SPC had expired some three years earlier, on 10 August 2006, but Daiichi alleged that it had been infringed by Sandoz in July 2006. Daiichii thus sought evidence of past infringements of the SPC, after it had expired. To explain the delay, Daiichii submitted that the French patent office had erroneously held that the SPC had lapsed, a decision which was reversed by the Paris Court of Appeal in 2007.

The ex parte decision awarding discovery was successfully contested by Sandoz. The first instance Court revoked the decision on 15 April 2009. In its judgment of 18 November 2009, the Paris Court of Appeal annulled the withdrawal of the saisie by the first instance Court (M. Schaffner & R. Viret, Validity of a ‘saisie-contrefaçon’ carried out after the expiry of the patent, Journal of Intellectual Property Law & Practice (2010) 5 (11): 756-757). The Court held that it was irrelevant whether the SPC was still in force at the time of the petition, as long as any act committed at that time was not the subject of the request.

In turn, Sandoz sought and obtained the annulment of the appellate judges' decision from the French Cour de Cassation. The Court's reasoning is brief. It rules that Sandoz' first plea in law is well-founded and that only a party who can establish both the existence of their title and the fact that it is in force is entitled to a saisie-contrefaçon. The Cour de Cassation annulled the judgment and ordered Daiichi to pay the costs of the proceedings.

Analysis

The decision in Sandoz/Daiichi is objectionable for several reasons. First, no legal provision appears to support the view that a patent has to be in force to obtain a saisie-contrefaçon. The French Intellectual Property Code and the Belgian Judicial Code only require that the petitioner has the capacity to file ‘an infringement action’. The latter includes claims for damages, which can be filed both before and after the expiry of the patent, as long as the claim is not barred by the applicable statute of limitations. There is a plain logic to these provisions: as long as the discovery request relates to infringements – ie acts which necessarily occurred during the patent's term – and the patentee can still act, the status of the patent at the time of the saisie request does not seem relevant.

Secondly and in the same vein, the Cour de Cassation's judgment is discriminatory: the expiry date of a patent or an SPC is an arbitrary cut-off date for entitlement to solicit discovery. In terms of claims for damages, nothing but the relevant statute of limitations distinguishes the holder of an expired patent and one of a patent that is still in force. As long as the former's claim for damages is not statute-barred, he too deserves the right to collect evidence of infringement. This was, in my view rightfully so, the reason why the Paris Court of Appeal had allowed the saisie requested by Daiichi in the judgment under appeal and, a few months earlier, in Deprat/Zurfluh Feller (Paris Court of Appeal 3 March 2010, Docket No. 07/14488). Similarly in Belgium, the Antwerp Court of Appeal dismissed Disco-Press' claim to annul a decision awarding discovery to Philips because some of the patents invoked had expired. According to the Antwerp Court, expiry did not exclude the determination of infringing acts that occurred during the patent term (Antwerp Court of Appeal, 2 November 2005, Docket No. 2004/AR/1870).

Thirdly and finally, the judgment appears to be at odds with Article 7 of Directive 2004/48 which requires that measures for collecting evidence are made available to parties ‘who have presented reasonably available evidence to support his/her claims that his/her intellectual property right has been infringed or is about to be infringed’ (emphasis added). This provision does not require that infringement is current or continuing at the time of the request for discovery. As the Directive imposes harmonized minimum standards for intellectual property protection, it does not allow national provisions (or interpretations) which are less favourable to intellectual property holders. Admittedly, one could argue that Article 4 of Directive 2004/48 holds that the measures and remedies set out in the directive must be made available to ‘holders of intellectual property rights’ and to ‘all other persons authorized to use those rights’ and that an expired patent no longer qualifies as an intellectual property right. Most will agree, however, that such interpretation of the Directive is flawed because, among other reasons, it affects more than just the provisions on evidence.

This critique does not imply that the physical seizure of stocks or a freezing order, measures which can be requested as a measure accompanying discovery in Belgium when infringement cannot reasonably be contested (Article 1369bis/1, §4 of the Belgian Judicial Code – France has a similar provision in Article L615-3, 2nd indent of the Intellectual Property Code but it does not form part of the saisie-contrefaçon), should still be available after expiry. Such measures exceed the probatory nature of discovery and resemble a preliminary injunction. Injunctive relief is in principle no longer available post-expiry – save in exceptional circumstances, for instance where it can be proved that the goods were manufactured during the patent's term and that their manufacturing was thus an infringement. Accordingly it can, normally speaking, no longer be awarded as a measure accompanying a saisie-contrefaçon either. This would unduly limit the seized party's freedom to operate.

Nor do I mean to say that a request for post-expiry discovery should not be carefully examined by the court. Discovery should, in those cases, be strictly confined to elements of relevance for acts that occurred during the term of the patent. Use of the saisie-contrefaçon to facilitate mere fishing expeditions is unacceptable (see, for instance, the Belgian Cour de Cassation's judgment of 29 November 2009 in INEOS/Chevron, Docket No. C.08.0206.N.1, in which the Court held that the mere fact that a competitor had opposed the petitioner's process patent with the EPO did not justify discovery at the competitor's production site). However, these concerns are equally relevant to discovery during the term of protection and they do not justify a per se dismissal of the request because the patent has expired. As long as the patentee's claim for damages is not statute-barred, measures to collect evidence to support such claim should remain available.

Practical significance

Once a patent has expired, it seems a saisie-contrefaçon is now no longer available in France and, consequently, it will likely become more difficult to establish damages incurred by past infringements. Depriving patentees, or ex-patentees if you will, of the right to gather evidence after the expiry of their title may encourage competitors to begin manufacturing and stocking up before – but close to – the patent's expiry date. The risk that a patentee would find out may not suffice to deter such strategy in case an immediate and large-scale market entry upon expiry would lead to substantial financial rewards. This concern is particularly relevant for the pharmaceutical industry, where generic competitors often rush to the market upon patent expiry. The outcome of Sandoz/Daiichi Sankyo is unfortunate and it is hoped this wind does not catch the sails of other European courts. To date, post-expiry discovery remains available in Belgium. The French supreme judiciary has now chosen a different route. Perhaps on the next occasion, the Paris Court of Appeal could ask the European Court of Justice for a preliminary ruling on Article 7 of Directive 2004/48, so France can bid adieu to the teaching of this judgment.