The Colour Orange and Acquired Distinctiveness – Veuve Clicquot's Long Road to Recognition

The Sparkling Shade of Orange – Background to the Case

In 1998, the iconic Champagne house Veuve Clicquot (or more specially the company SA Veuve Cliquot Ponsardin, the predecessor in law to the current intervener in the proceedings before the General Court, MHCS) filed an EU trade mark application for a very specific shade of orange:

The mark, intended to cover “Champagne wines”, was registered in 2007 following a decision by the Board of Appeal in which it was concluded that it had been demonstrated that a distinctive character had been acquired through use in respect of Champagne wines.

Fast forward nearly a decade: Lidl filed an application for a declaration of invalidity in 2015, on the basis of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(a) and (b) of Regulation No 207/2009 (now Article 7(1)(a) and (b) of Regulation 2017/1001). The case eventually reached the General Court in 2024.

The General Court had to review a decision by the Fourth Board of Appeal, in which it took the view, first, that the mark at issue complied with the requirements of Article 4 of Regulation No 40/94 and, secondly and more importantly, that the evidence submitted by the intervener demonstrated that a significant proportion of the relevant public was, at the time of the application for registration of that trade mark, accustomed to the shade of orange as protected by that mark and that, therefore, there was no doubt that the mark at issue had become distinctive through use made of it within the meaning of Article 7(3) of that regulation at the time that trade mark was filed.

A Colour Mark or Just a Nice Hue?

The General Court agreed that the mark had been correctly registered as a colour per se and accepted the validity of its graphic representation – a digitally reproduced colour sample. But the key question remained: Had Veuve Clicquot proven that its orange colour had acquired distinctiveness throughout the EU at the time of the application for registration of that trade mark?

Acquired Distinctiveness: Not All Evidence Is Equal

The judgment offers a crash course in what is required to demonstrate acquired distinctiveness in the EU:

• Secondary vs. direct evidence: Certain pieces of evidence are considered to be of greater probative value than others.
  
  Sales figures and advertising spend – while helpful – are only considered secondary evidence. They may, by their nature, have a supporting character as evidence, but are not sufficient in themselves to prove acquired distinctiveness. In contrast, direct evidence such as surveys, market studies, or statements from professional associations carry more weight.

• The standard is high: The trade mark must be distinctive in each and every relevant EU Member State. While it is not necessary to submit identical pieces of evidence for every country, the overall proof must support acquired distinctiveness across the whole EU, not just in part or in most.
  
  Against this background, it is possible that evidence provided to establish that a particular sign has acquired distinctive character through use is relevant with regard to several Member States, or even to the whole of the European Union. In particular, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned. The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has sufficient knowledge of the products and services that are present on the national market of the second.

What Went Wrong for Veuve Clicquot?

The General Court held that Veuve Clicquot had failed to meet this standard:

• There was no direct evidence of acquired distinctiveness in Portugal and Greece – such as consumer surveys or professional endorsements.
• The attempt to extrapolate findings from French and Belgian courts to other Member States was insufficiently reasoned, except perhaps for Luxembourg (given its linguistic and cultural proximity to Belgium).
• Overall, the Court emphasised that assumptions about market presence and recognition are not enough – hard data is needed.

With that said not all is lost: the Board of Appeal did not examine the question whether the earlier trade mark had acquired distinctive character through use between its registration and the filing of the application for a declaration of invalidity. Thus, the case has been remitted to the Board of Appeal to further pursue the proceedings.

Lessons for Brand Owners

This decision sends a clear message to brand owners seeking to rely on acquired distinctiveness:

1. Prepare to prove it – thoroughly. Especially in cases involving colour marks, packaging shapes, or other non-traditional signs, objective evidence is key.
2. Surveys matter. Market studies showing a relevant level of awareness among the relevant public in each Member State can make or break the case.
3. Don't rely on history alone. Even a century-old brand like Veuve Clicquot must show current, quantifiable consumer recognition in all required territories.
4. One weak link is enough. Failing to show distinctiveness in just one Member State can doom the entire application or registration.

Our Perspective

We regularly advise clients navigating the complexities of proving acquired distinctiveness – and we know from experience how tough this battle can be. Whether you’re seeking EU trade mark protection for a unique packaging colour, a product shape, or a non-traditional sign, we’re here to support your strategy with the right legal and evidentiary approach.

Need help gathering the right kind of proof? Or want to stress-test an existing evidence set before going to the EUIPO or court? Get in touch with our IP team.