Veuve Trademark a FIZZER

Picture this. It was 2006 and Veuve Clicquot is granted registration in the EU of the colour orange! This colour to be exact.

An orange box which has been used in Veuve Trademark a FIZZER blog post in Trademarkability

The Orange Mark

Whoo-hoo, the champagne corks were popping and glasses were full to the brim with “fizz” spilling from bottles bearing the famous orange label … and then … fast forward to 6 March 2024.

The EU General Court’s judgment says “NO TRADEMARK PROTECTION FOR YOU!”. So, why?

Back in 1998 (I did say it was a long battle!) the owner of the Orange Mark filed its trade mark application with the European Union Intellectual Property Office (EUIPO). Next, evidence submitted by Veuve Clicquot demonstrated that “a significant proportion of the relevant public was, at the time of the application for registration of trademark, accustomed to the shade of orange and that, therefore, there was no doubt that the mark had become distinctive through use made of it … at the time that trade mark was filed.” Happy days.

Important to note is that a non-traditional trademark, such as a colour mark, may only be registered in the EU if evidence is provided that it has acquired distinctive character in connection with the goods/services at issue through use in “all parts of the European Union.”

Then, on 6 March 2024, there’s trouble. After many – and I mean MANY - rounds in court, the EU General Court found that Veuve Clicquot had failed to provide sufficient evidence that the Orange Mark had amassed secondary meaning throughout the entirety of the EU, namely, in Greece and Portugal.

And just like that the EU General Court invalidated Veuve Clicquot’s registration for the Orange Mark.

What can you do in Australia to avoid a similar situation?

Two things:

1. Use it (or lose it)

2. As soon as you’re settled on your branding (and you know no-one else is already using something similar) use it as extensively as possible

3. File your trade mark application asap.

You want your branding to act as a “badge of origin” such that when members of the public see it, they think of your business. Get it out there as much as possible and keep records of the use where you can.

Keep records of when your trade mark was first used, the period and geographical extent of the use. You may ultimately need to provide information on advertising expenditure and annual turnover figures in relation to your trade mark together with how your trade mark is used in connection with its goods and/or services so that it's viewed “as a trade mark” and not a description of the goods and/or services.

Key lesson – Registered Trade Mark protection is vital

You may have registered a business or company name with ASIC. Good step. You may have secured domain name(s). Tick. Importantly, you will not have full protection of your branding unless your trade mark is registered.

Rights as the owner of a registered trade mark include:

the exclusive right to use your trade mark as a “brand” for your goods or services in the jurisdiction of registration;
licensing others to use your trade mark;
the sale of the trade mark; and
the right to legally deter others from using your trade mark.

It is important to protect these rights. Aregistered trade mark also acts as an obstacle to any subsequent trade mark application by a competitor to register the same or similar trade mark in the same or similar class(es).

Don’t find yourself in a position where you think you have adequate trade mark protection only to discover that you’ve fallen short and are unable to retain or defend your branding (and have wasted all that hard work).

You don’t want to find your valuable branding is a fizzer!