In January 2018, the examiner partially refused the application on the basis that the mark was descriptive and non-distinctive. The applicant appealed but the Board of Appeal largely agreed with the examiner’s position. The Board of Appeal’s reasoning was that the relevant public (the general public and professionals) would interpret OFF-WHITE as referring to a colour (“a white colour with a grey or yellowish tinge”) which could be a descriptive reference to the colour of the goods. The figurative elements of the logo were simple and decorative and would not alter the public’s view that OFF-WHITE would describe goods of a certain colour. The Board of Appeal also found that, because of its descriptive nature, OFF-WHITE was also devoid of distinctive character. A further appeal to the General Court ensued.

OFF-WHITE: descriptive of the goods in question?

For a mark to be refused on the basis that it is descriptive, there must be a direct and specific relationship between the mark and the goods and services for which registration is sought. The assessment is made through the eyes of the notional relevant consumer, in this case, the general public and professionals in the English-speaking territories of the EU (at least, the UK, Ireland, and Malta); the goods in question being everyday goods.

The General Court agreed with the Board of Appeal’s perception that “off-white” would be understood as “a colour very close to white, frequently having a grey or yellow tinge; almost white”, in line with the Oxford English Dictionary definition.

The General Court also noted that the colour of a product could be a “characteristic” for the purposes of a descriptiveness objection under Art 7(1)(c) EUTMR. However, in order for the descriptiveness objection to “bite”, it would have to be shown that the colour would be “objective and inherent to the nature of [the goods in question], and intrinsic and permanent with regard to [those goods]”.

The General Court noted that the aesthetic value and contribution of the colour to goods were subjective considerations. The value of a colour would vary based on individual consumer preferences. Such considerations could not determine how a sign may be perceived by the public as a whole.

The General Court concluded that OFF-WHITE was not descriptive of the goods, as it would not be the sole or predominant colour of the goods in question. Rather, an off-white colour would be “a purely random and incidental aspect which only some of those goods may have and which does not, in any event, have any direct and immediate link with their nature”.

Independence of absolute grounds for refusal

The General Court stressed that the descriptiveness and non-distinctiveness grounds for refusal are independent of each other and need to be examined separately. Just because a mark is not descriptive it does not necessarily mean that it is therefore distinctive.

In this case, the Board of Appeal found the mark to be descriptive and thus devoid of distinctive character. Given the General Court found the mark was not descriptive, the Board of Appeal had erred by simply deducing the mark was non-distinctive.

Off-White’s appeal to the General Court was therefore upheld.

Comment

This decision may be useful to deploy where marks consisting of colour names face objection on the basis that they are descriptive of the goods. However, it is clear that it will depend on the mark and the nature of the goods/services concerned. If the mark consists of a colour name that has a direct and immediate link with the goods in question (for example, “silver” for jewellery) then a descriptiveness objection may be well-founded.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: Off-White LLC v European Union Intellectual Property Office (EUIPO) (defendant)
Date: 25 June 2020
Citation: T‑133/19