On 6 July 2012, the Brussels Commercial Court (the “Court”) ordered Jupiler Blue to be withdrawn from the Belgian Market due to possible confusion with blue Maes cans and bottles.
Jupiler Blue beer is a low-alcohol beer sold by AB InBev (“InBev”). The cans and bottles of Jupiler Blue were recently redesigned and focus on the name ‘BLUE’ in white font against a blue background.
Maes, a competing brewer which had registered the colour blue as a Benelux trade mark, summoned InBev before the Commercial Court of Brussels claiming infringement of its registered trade mark and of unfair competition under the Law on market practices and consumer protection (Wet betreffende marktpraktijken en consumentenbescherming/Loi relative aux pratiques du marché et à la protection du consommateur – the “Unfair Competition Law”). InBev counterclaimed the invalidity of Maes’ trade mark in the colour blue.
Validity of the trade mark
The Court rejected InBev’s argument that the registered trade mark failed to meet the formal registration requirement of graphic representation. The Court held that the reference to the colour code in the Pantone Matching System was sufficient to satisfy the requirement that the trade mark must be capable of being represented graphically.
In addition, the Court also refused to invalidate the trade mark for lack of distinctiveness. The Court considered Maes’ market share, the duration of the use of the trade mark and the investment made to make the trade mark known. The Court also took account of a market survey presented by Maes which indicated that consumers associate the registered colour blue for beers with Maes. On the basis of these elements, the Court concluded that the colour blue had obtained distinctive character and therefore qualified for trade mark protection.
Trade mark infringement
Having confirmed the validity of the trade mark, the Court turned to the infringement claim. It held that InBev used an identical sign (considering the low level of attention of the relevant consumer, the colour of InBev’s products was regarded identical to the registered trade mark), for identical goods (i.e., beer). The Court dismissed InBev’s arguments that the colour blue was not used as a trade mark and its product bore various other well known trade marks, and held that the product infringed Article 2.20.1.a of the Benelux Treaty on Intellectual Property (“BTIP”).
Moreover, the Court also held that the products infringed Article 2.20.1.c of the BTIP. This provision prohibits taking an unfair advantage of or diminishing the distinctive character or the repute of a well known trade mark. In the case at hand, the Court considered that Maes’ trade mark is “well known” and the use of the colour blue by InBev would affect the identity of the registered trade mark and diminish the effect of the trade mark.
Unfair trade practices
Finally, the Court also held that InBev had infringed the Unfair Competition Law.
First, the global similarities between the parties’ products led the Court to decide that InBev’s product constituted a form of parasitic competition.
Second, the Court maintained that the similar packaging could cause confusion in the mind of the relevant public. This was deemed to constitute a misleading practice prohibited under Articles 89,1 and 91,13 of the Unfair Competition Law juncto Article 10bis, paragraph (3)(i) of the Paris Convention for the Protection of Industrial Property of 20 March 1883.
The Court ordered InBev to cease the infringement within one month of service of the judgment. As a result, InBev is now required to withdraw its Jupiler Blue products from the market.
InBev announced that it would appeal the judgment.
