‘Off-White’ goods not inherently or objectively 'off-white' in colour - so trade mark not descriptive in nature, says EU General Court

The luxury fashion brand 'Off-White' is renowned for unique collaborations with other well-known brands (Ikea, Nike and Jimmy Choo, to name a few), as well as its forays into the realm of IP registration, particularly in the US. From red zip ties to paperclip jewellery to even diagonal streetwalk lines, the brand has tried to register many a fascinating trade mark (you can read more about it on The Fashion Law, as linked above).

In June - in much more straight-forward proceedings by comparison - the EU General Court (GC) examined one of Off-White’s figurative trade marks which featured the word ‘Off-White’ in case T-133/19. The GC ultimately overturned the findings of the Board of Appeal, on the basis that the word element ‘Off-White’ would not be descriptive of the goods for which registration was sought.

Background

In October 2017, Off-White filed an application with the EUIPO to register the figurative mark above in the following Classes: 

• 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 examiner partially refused the application for registration with regards to the goods in Classes 9, 14 and 20 on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001 (the EU Trade Mark Regulation, or EUTMR).

The Second Board of Appeal (‘the Board’) rejected the subsequent appeal in relation to all goods in Classes 9 and 20, as well as “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.

The Board determined that the relevant public would find the term ‘off-white’ as referring to a colour which could reasonably be perceived as a characteristic that was significant and clearly relevant for those goods; as such, it would be perceived as a descriptive reference to the colour of those goods. This conclusion would not be affected by the figurative elements of the mark applied for, since they were extremely simple and purely decorative in character, thus not capable of distracting the public’s attention from the descriptive message conveyed by the word element. The Board also found that, because of its descriptive nature, the sign would also be devoid of distinctive character.

A further appeal to the GC followed.

Article 7(1)(c) EUTMR - is ‘Off-White’ descriptive of the goods in question?

As readers know, in order for a sign to be 'caught' within the application of Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the relevant public to perceive, without further thought, that it is a description of the goods or services in question or one of their characteristics. It is not necessary that the trade mark applied for is used, at the time of the application, in a way that is descriptive of the goods or services - rather, it is sufficient that it could be used for such purposes.

Decked out in appropriately summery affair
Credit: me :)

It was not disputed that the relevant public would be that located in the English-speaking territories of the EU (at least, the UK, Ireland, and Malta), with the relevant public consisting of both the general public and professionals, on account of the goods in question being everyday goods. 

Further, the GC agreed with the Board’s perception of the term ‘off-white’ by the relevant public as “a colour very close to white, frequently having a grey or yellow tinge; almost white”, in line with the Oxford English Dictionary definition.

Turning to the question of whether there would be a link between the word element ‘off-white’ and the goods in question, the GC noted that it could not be be ruled out a priori that the colour of a product may be a 'characteristic' as referred to in Art 7(1)(c) EUTMR. However, it would have to be shown that the colour designated by the word is a characteristic objective and inherent to the nature of the goods in question, and intrinsic and permanent for those goods. Ultimately, the off-white colour was not considered an intrinsic characteristic inherent to the nature of the goods in question. Contrary to the Board, the GC did not think it possible that the aesthetic value and contribution of the colour could be considered, since this would involve subjective assessment - the value of which would vary based on individual consumer preferences. As such, it could not be used as a factor to determine how a sign may be perceived by the public as a whole. 

Moreover, the GC also found that ‘off-white’ would not constitute the sole or even predominant colour of the goods in question. Rather, it is a purely random and incidental aspect of the goods which does not have any direct and immediate link with their nature.

Therefore, the GC came to the conclusion that the Board had infringed Art 7(1)(c) EUTMR in finding that 'Off-White' would be descriptive of the goods for which registration was sought.

The independence of absolute grounds for refusal

Turning to Art 7(1)(b) EUTMR, the GC noted that the absolute grounds for refusal in Article 7(1) EUTMR are independent of the others and require separate examination.

Just because a mark has been found to be descriptive does not necessarily mean that the mark is not distinctive. Therefore the Board, by coming to the conclusion that the mark was not distinctive since it was descriptive, had also infringed Art 7(1)(b) EUTMR.

Comment

As mentioned in the opening, this is probably one of the simplest successes that Off-White has found whilst going about its business in IP. Though the case did not specifically cover Class 25 clothing goods (that which Off-White is so well-known for), the fact that accessories in classes 9 and 14 - goods that would be regarded as similar/complementary to clothing - were covered in this application could (arguably) support a conclusion that 'Off-White' would not be descriptive of clothes either.