On 21 October 2013, the Brussels Court of Appeal ruled on a dispute between Alken Maes Brouwerijen N.V. and InBev Belgium N.V. concerning the alleged violation by InBev of an abstract Benelux colour trademark held by Maes. The trade mark at issue was registered by Maes on 6 April 2006 covering a specific shade of blue. In 2006, InBev launched the “Jupiler BLUE” pils beer. When InBev changed the design of the cans, bottles and packaging of the Jupiler BLUE beer in 2012, Maes sued InBev for infringing its trade mark rights.
On 30 April 2012, Maes sought injunctive relief against InBev before the President of the Brussels Commercial Court who ruled on the case on 6 July 2012 (See, VBB on Belgian Business Law, Volume 2012, No. 7, p. 9, available at www.vbb.com). The President held that InBev had infringed the trade mark by marketing and advertising Jupiler BLUE while using the colour blue. InBev complied with the President’s ensuing order to discontinue the wrongful marketing and advertising of Jupiler BLUE, but it also appealed the first instance decision. The Brussels Court of Appeal has now confirmed the infringement but based its decision on different grounds than the judge at first instance.
InBev’s primary defence was that Maes’ colour trade mark was invalid. InBev argued that the trade mark at issue lacked the required inherent distinctive capacity or acceptance of the distinctive character through use in the Benelux countries. In response to this argument, the President of the Brussels Commercial Court had stated that, while colours do not have a distinctive capacity from the beginning, they can acquire a distinctive nature through use. The President further found that Maes’ trademark had obtained acceptance through use in the Benelux, even though the use of the blue colour for Maes beer was only well-known in Belgium. This finding was widely criticised.
The Brussels Court of Appeal took a different approach to InBev’s argument holding that, while colours as such possess little inherent capacity for communicating specific information, the possibility that a colour as such may in some circumstances serve as a badge of origin of the goods or services of a business cannot be ruled out. In view of the Guidelines on Refusal of the Benelux Office for Intellectual Property, the Brussels Court of Appeal inferred from the initial registration of the trade mark that the Office had considered that Maes’ colour trade mark possessed the required distinctive capacity. As a result, the Court of Appeal placed the burden of proof on InBev to demonstrate that Maes’ colour trade mark had lacked all distinctive capacity at the moment of registration.
It concluded that InBev had failed to meet the required standard of proof and therefore maintained that the trade mark had been validly registered. As a result, the Court of Appeal also found that InBev’s argument relating to acceptance through use was not relevant, since this notion may only come into play in cases of a lack of distinctive capacity from the beginning.
Second, InBev argued that it had not infringed the Benelux trade mark legislation, since it had not used the colour blue as a trademark. The Court of Appeal, differently from the President of the Brussels Commercial Court, did not find that InBev had violated Article 2.20.1.a of the Benelux Convention on Intellectual Property (“BCIP”). The Court of Appeal held that the condition of identity between a trade mark and the sign used by InBev was not met since InBev used a significantly lighter colour and since it also used several shades of blue.
Nevertheless, the Court of Appeal agreed with the lower court that Article 2.20.1.c BCIP had been infringed. This provision prohibits taking an unfair advantage of or diminishing the distinctive character or the repute of a well known trade mark. With regard to the condition of reputation contained in Article 2.20.1.c BCIP, the Court of Appeal considered that the colour trade mark Maes is a well-known trade mark for beers. This conclusion was based on the intensity, the geographical reach and the duration of the use of the trade mark, as well as on the extent of the publicity expenses incurred by Maes to promote its trade mark and on the proportion of the relevant public that identified the goods as originating from a specific undertaking.
As far as the condition of detrimental impact on the distinctive character of the trade mark was concerned, the Court agreed with Maes that the use by Jupiler of the blue colour diminished the distinctive capacity of its trade mark and that it created the risk that, over time, the colour blue would be conceived by average beer consumers as referring to beer in general as opposed to the specific beer produced by Maes.
Maes had also submitted a new claim before the Court of Appeal, requesting information on the destination and the distribution channels of the infringing products on the basis of Article 2.22(4) BCIP. The Court of Appeal did not grant this request, reasoning that InBev had discontinued the marketing of beer in cans and bottles that infringed Maes’ trade mark since August 2012. Since beer marketed in August 2012 has by now already reached its expiry date, any leftover products in infringing packaging would no longer be available on the market. Maes’ claim on the basis of Article 2.22.1 BCIP, which allows a trade mark owner to claim that movable goods which have adversely affected its right be destroyed or rendered unserviceable, was rejected on the same grounds.
Finally and based on the above findings, the Court of Appeal also held that InBev was guilty of unfair market practices within the meaning of Articles 89, 1°, 91,13° and 95 of the Unfair Competition Law, and of unfair competition within the meaning of Article 10bis (2) and (3) of the Paris Convention for the Protection of Industrial Property.