And it was all yellow - FrieslandCampina successfully invokes yellow color trademark

The chocolate drink brand CHOCOMEL (in Belgium: Cécémel) is still largely popular in the Benelux countries.

The CHOCOMEL products are available in the Benelux since 1932 and according to FrieslandCampina, the colour yellow (PMS 116U) has been consistently used on its products and in advertisements since.

Based on their colour mark for this specific yellow colour, FrieslandCampina filed opposition against a recent Benelux device mark of CACAOLAT, of which the colour yellow is an important feature.

CACAOLAT was the world’s first bottled milkshake and it is available since 1933 mainly on the Spanish market. In this opposition CACAOLAT explains that their mark CACAOLAT has been registered since 1953 and the trademark in stylized brown letters with a yellow background has been registered in 2014 as an International registration designating the Benelux as well.

CACAOLAT agrees that CHOCOMEL is a popular brand, however it disputes that the invoked colour mark has a reputation or enjoys an enhanced distinctive character. The Benelux Office however finds that the evidence by FrieslandCampina shows that the opponent uses the dark shade of yellow (identical to or highly resembling the shade of the trademark invoked) over a long period of time in a dominant way.

According to the Benelux Office it has been established that the invoked colour mark has a strong reputation with regard to chocolate milk. In view of this reputation and the visual similarity between the signs, it is likely that the image associated with the invoked colour mark may transfer to the contested goods (mainly cacao-based beverages and the like).

The argument that different shades of the colour yellow are widely used in the chocolate drink market cannot, according to the Benelux Office, constitute a valid reason for CACAOLAT to register a similar colour, because it does not explain why the shade of yellow in the sign they filed is (nearly) identical to the trademark invoked. It is also not clear why the defendant has changed the original colour of the previous CACAOLAT registration to one that is almost identical to the colour used by the FrieslandCampina for years.  

FrieslandCampina is for these reasons successful in withholding CACAOLAT for most goods they would like to register. Appeal to the Benelux Courts is still possible for CACAOLAT.

We are curious to learn whether FrieslandCampina will take this case one step further, meaning infringement action based on their colour mark. We did not come across CACAOLAT products in the Dutch supermarkets.

 For now they have been successful based on their colour mark in opposition. An example to use in (trademark) schoolbooks!

Author: Erik Stegeman

Bio: Erik Stegeman is a trademark attorney and specialist in trademark protection for bands, DJs and artists. His client portfolio includes many famous DJ’s like Charlotte de Witte, Swedish House Maffia and Tiësto. He writes a lot about music trademark infringements. And if you are lucky, he will give you hints on the latest band and DJ’s.