Food Union protects its valued trademark – A specific tone of orange

On March 10, 2021 the Riga Regional Court (hereinafter, the “Court”), handed down its judgment in one of most interesting trademark disputes in Latvia in recent years. The dispute concerned the colour trademark (a specific tone of orange) owned by Rīgas Piena Kombināts (Food Union) with respect to the product “curd snacks”.

Colour trademarks, i.e., trademarks protecting a particular colour tone, are relatively rare and not normally heard of globally. Only few such trademarks are registered in the territory of Latvia (for example, Air Baltic’s green tone). The reason for this is the so-called “absolute grounds” for refusal to register a trademark, in particular, the trademark shall not be registered if it is lacking any distinctive character in respect of the goods or services applied for. This ground for refusal can be rebutted by proving the sign has acquired distinctive character in the perception of the relevant consumers as a result of its use, that is to say, it is capable of indicating the origin of a particular product or service.

In the case-law, disputes over colour marks began in the 1990s with the general question of whether a colour could be registered as a trademark. Nowadays, there is no doubt colour trademarks can be registered, and such a trademark type is included in the law, so disputes arise only about the preconditions for the registration of a particular colour trademark.

The Court of Justice of the European Union has acknowledged that only in exceptional circumstances the existence of a “distinctive character” of a colour as such before any use is conceivable, but a colour may acquire distinctive character through use. When assessing the existence of a distinctive character, the court analyses whether the owner of the trademark has sufficiently “introduced” to the public the corresponding colour tone and whether the colour has become able to identify the product in question as originating from a particular undertaking and thus, whether it allows consumers to distinguish this product from the goods of other merchants. This means a merchant who wishes to register a colour trademark must demonstrate this colour has obtained a certain level of awareness in the consumers’ perception and consumers associate the colour with the specific goods or services of the merchant.

Historically, consumer brands such as Milka chocolate (purple), Veuve Clicquot champagne (orange), Cadbury chocolate (dark purple) have been able to protect their colour brands via registered trademarks.

In 2017, Food Union applied for trademark registration in Latvia – the orange colour used for the well-known Kārums products. Tukuma Piens and Preiļu Siers objected to this registration and brought an action in court, arguing the trademark lacked distinctive character because it was used by many dairy producers and the exclusive right to use this colour could not be granted to only one company.

The first instance court upheld the action and declared the registration of the mark invalid. However, the appellate court has ruled to the contrary and acknowledged the trademark, as a result of its use has acquired a “distinctive character” in the perception of Latvian consumers in relation to product “curd snacks”.

The Court, in its judgment underlined the orange colour trademark has been used for a long time and intensively in the Latvian market in connection with Kārums products and has gained high recognition among consumers and brand specialists. The Court has taken into account both the results of the submitted consumer survey, as well as information on sales of Kārums products and advertising and marketing activities.

As a result of the Court’s judgment, Food Union has managed to protect the registration of its colour trademark, which grants it the exclusive right to use this colour in Latvia in relation to “curd snacks” products.

“The Court’s judgment confirms the curd snack = Kārums = orange. The orange colour has been present on Kārums curd snacks since its inception and over the decades has been established as an important part of the beloved and recognizable Kārums identity, along with the recognizable name and the notable taste of the snack. This is undoubtedly a historic moment in Latvian jurisprudence and brand management, but it is especially important for our team. It is a recognition of their contribution to the development of the brand over several years and a confirmation that it is in our own strength to protect it in all ways,” emphasizes Irēna Holodnaya, Head of Food Union in Latvia.

The VILGERTS team is proud to have represented the client in this trademark dispute related to such a favourite product in Latvia. We thank Food Union for the opportunity and unequivocally agree that “Latvian's favourite treat is cottage cheese in chocolate glaze” (quote from the book “Latvian. 100 National Peculiarities”).

by Brigita Tērauda, Partner, Head of IPR, Latvia

Team

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