In 1998, Veuve Clicquot Ponsardin, now MHCS (“Applicant”), sought to register its distinctive orange color as an EU trademark by filing an application before the Office for Harmonization in the Internal Market (now European Union Intellectual Property Office, “EUIPO”). The Applicant filed the trademark under the heading “Color claimed” and proceeded to tick the box for “figurative mark” on the application form as it sought registration inter alia for goods in Class 33 (champagne wines) of the Nice Classification.
In 2000, the Examiner dismissed the application, declaring the mark devoid of distinctive character according to Article 7(1)(b) of Regulation (EU) No. 2017/1001 on the European Union trademark (“EUTMR”). Moreover, the Examiner declared that as the subject of the application was a color, the Applicant should have ticked the box “other” rather than the box for “figurative mark”. The Applicant appealed the decision before the Second Board of Appeal, which concluded that the application form had to be interpreted as referring to seeking protection for a color mark, even though the box for a figurative mark had been ticked. Upon annulling the Examiner’s decision, the Second Board of Appeal remitted the case to the Examiner to determine whether the trademark had acquired a distinctive character through use in accordance with Article 7(3) of Regulation No. 40/94 (now Article 7(3) of the EUTMR).
The Examiner again dismissed the application, and then in 2006 the Second Board of Appeal annulled the Examiner’s second decision and found that a distinctive character had, in fact, been acquired by the trademark of the Épernay-based company through use for champagne wines.
On November 3, 2015, Lidl Stiftung & Co. KG (“Intervener”), a German discount supermarket chain with an international presence, filed an application to declare the Applicant’s trademark invalid under Article 4 of the EUTMR. The Intervener’s case for invalidity in 2015 was that the Applicant’s color shade—though identified using a scientific definition—was not sufficiently distinguished, and therefore the trademark lacked any distinctive character. In 2018, the Cancellation Division dismissed the Intervener’s application as the trademark had been qualified by the Second Board of Appeal, and treated by the parties, as a color mark; the description and depiction of the mark were clear, and it had acquired distinctive character through use.
However, the Intervener appealed the decision before the First Board of Appeal of the EUIPO, which annulled the Cancellation Division’s decision. Because the “figurative mark” box had been ticked in the first place, on many occasions the Applicant had referred to a figurative mark of color in its correspondence and it had never requested reclassification before the mark was registered as a figurative mark. Thus, the mark’s designation as figurative could not be regarded as a manifest error. Finally, the First Board of Appeal held that the Second Board of Appeal did not have jurisdiction to reclassify the mark and that according to the judges’ evaluation, the mark could be considered only a figurative mark claiming a specific color.
The decision of the General Court
Eventually, the Applicant appealed the decision of the Second Board of Appeal of the EUIPO before the General Court (“GC”), which issued its judgment on September 15, 2021. In this case, the Applicant’s main argument was that by interpreting the trademark as a figurative one, the First Board of Appeal went beyond the pleas and arguments made by the parties and in doing so breached the relevant procedural rule for appeals.
The GC upheld the Applicant’s argument and held that in the invalidity proceedings the nature of the contested mark was not a matter of fact or of law raised by the parties, nor did it concern a fact relevant to ensuring correct application of the EUTMR or essential procedural requirements. Indeed, the Second Board of Appeal had already taken the issue of the nature of the contested mark into account when deciding on the registration proceeding in the first place. Therefore, the GC concluded that the First Board of Appeal had exceeded its jurisdiction in deciding said matter.
The GC also upheld the Applicant’s fourth set of grounds for appeal, which alleged a procedural failure of the First Board of Appeal in failing to question the parties on the nature of the contested mark, thereby infringing the Applicant’s rights of defense under Article 94(1) of the EUTMR.
This decades-long saga shows how far trademark filing choices can go, and how careful applicants should be when considering their brand protection strategies. In trademark matters—especially when it comes to applications covering unusual signs, such as color marks—checking (all) the right boxes really is key: to ensure effective protection—and avoid lengthy and uncertain disputes—brand owners should seek protection for figurative marks or other kinds of marks depending on the actual features of the signs they intend to secure.
 European Court of Justice (General Court), September 15, 2021, Case T‑274/20, MHCS v European Union Intellectual Property Office (EUIPO), https://curia.europa.eu/juris/document/document.jsf?text=&docid=246024&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=6873174.