The plaintiff in a recent case owned a colour mark for a shade of violet. The mark was protected both in the European Union and internationally and had been used for more than 100 years in several countries, including Switzerland. The mark was well known with regard to Milka chocolate, the packaging of which featured a violet cow.
The defendant used a similar (but not identical) violet colour on the packaging of its chocolate bonbons. The plaintiff sued the defendant for infringement.
Metropolitan Tribunal decision
The Metropolitan Tribunal ruled in the plaintiff's favour, ordering the defendant to:
- cease using the protected shade of violet;
- provide information on the volume of sales of confectionery in violet packaging; and
- publish the judgment in the media.
The tribunal first examined whether the average consumer would associate the particular shade of violet in question with the plaintiff. In this respect, the tribunal used the Libertel (C-104/01) test, as set out by the European Court of Justice (ECJ). Under this test, the colour for which protection is sought must be used on a specific product, as the greater the number of goods for which protection is requested, the more extensive the exclusive right will be.
As an exclusive right granted for a colour prohibits competitors from using it, the authorities and courts must act carefully when granting trademark protection or enforcement orders.
The defendant filed a private expert opinion on the difference between the violet shade registered by the plaintiff and that used on the packaging for his confectionery and requested the tribunal to appoint an official printing expert. However, the tribunal ruled that the judges' knowledge was sufficient to decide in this respect. In other words, it ruled that the average consumer of the confectionery would make their decision quickly without examining the shade of violet used on the packaging in the manner of an expert.
Metropolitan Court of Appeal decision
The defendant filed an appeal with the Metropolitan Court of Appeal, which was rejected. The court agreed with the tribunal and considered two elements of its decision. First, it examined the tribunal's refusal to appoint an official expert. In this respect, the court referred to Section 177(1) of the Code of Civil Procedure, which states that an expert should be appointed for questions that require special experience. In the present case, such special experience was unnecessary, as the tribunal had been able to judge the likelihood of confusion. This decision corresponds with Hungarian case law in this regard.
The second question was the likelihood of confusion. In this respect, the court held that when the average consumer inspected the defendant's confectionery and the violet packaging, they would be reminded of the shade of violet of the plaintiff's Milka chocolate packaging. Further, they would assume that confectionery was a new Milka product, as they would not detect the difference in the shades of violet. As a result, the court found that the plaintiff's trademark rights had been infringed (8.Pf.20.735/2018; Vv.2018 No.1-2).
Colour combinations could be protected as trademarks under the previous Trademark Act 1969. However, single colours have only been trademarkable since Hungary joined the European Union and harmonised its trademark law therewith. Since then, the ECJ has developed rules on the protection of shades, including the recordal of Pantone numbers.
The present case is an example of the application of these rules during the enforcement phase. It is unsurprising that the Metropolitan Tribunal rendered such a detailed judgment, which even dealt with colour philosophy. According to the tribunal, violet is the king of colours; it has connotations of spirituality and luxury and is often used by premium brands.
The conclusions of both the tribunal and the court of appeal concerning the existence of a likelihood of confusion are convincing and in line with EU case law, as both entities took into account the attention and knowledge of the average consumer.
The point of contention in this case was the expert's opinion (or rather the refusal thereof). In conformity with the Code of Civil Procedure, it is rare to appoint an expert in trademark cases, as opposed to patent or copyright cases. The grounds for doing so are set out in the judgments in this case.
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