The US fashion company Off-White succeeded to register the following European combined trademark:
The classes of goods mentioned in the application were:
- Class 3, including soaps for personal use, perfumery and colognes;
- Class 9, including glasses and sunglasses;
- Class 14, including jewellery, cufflinks and watches; and
- Class 20, including pillows and cushions.
The EUIPO issued a refusal against this application based on absolute grounds – Article 7(1)(b) and (c) of Regulation 2017/1001 (the EU Trade Mark Regulation, or EUTMR.
The word part of the mark OFF-WHITE can be a descriptive characteristic for the mentioned goods because it means a color that is close to white with a grey or yellow tinge.
The Board of Appeal upheld this position for classes 9 and 20 and for “watches, wall clocks, horological and chronometric instruments; watch bands; presentation boxes for watches; and jewellery cases” and “precious stones; and semi-precious stones” in Class 14.
In the appeal, however, the General Court of the EU annulled this decision. According to the Court, although color is a product’s characteristic it can be descriptive if only it is an intrinsic, permanent characteristic inherent to the nature of the goods. This was not the case when it comes to Off-White because the mentioned goods can be offered in variety of colors. There is no single color that to be deeply connected to their nature as goods.
Apart from this the Court considered that off-white color cannot create an aesthetic value for the goods which to be a reason for purchasing because color is a subjective matter and every consumer has a different preference in that regard.