Colour inversion does not alter distinctive character – if the trade mark is sufficiently distinctive

In case R1422/2022-2, the Board of Appeal of EUIPO dealt with the question whether the colour inversion of a rather simple sign is sufficient to establish genuine use.

Background

Hummel Holding A/S (‘Hummel’) owns International Registration no. 915962 designating the EU for the following figurative mark:

It was registered for the EU in 2006 for various goods and services in classes 3, 18, 25, 28, and 35.

Barry's Bootcamp Holdings, LLC (‘Barry’) filed an application for revocation alleging non-use of Hummel’s IR. Hummel submitted more than 1,000 pages of evidence of use, including the following product pictures: 

 

EUIPO’s Cancellation Division found that genuine use was proven for the following goods:

• Bags for sports (class 18);

• Sports clothing, footwear and headgear, leisure clothing, footwear and headgear and fashion clothing, footwear and headgear (class 25);

• Balls for sports and games (class 28).

Barry filed an appeal, arguing, inter alia, that Hummel’s IR is registered in black on a white background but has, in many instances, been used in white on a black or otherwise coloured background. Barry contended that Hummel’s IR has a low degree of inherent distinctiveness. As a consequence, it was argued, the colour-inverted use altered the distinctive character (Art. 18(1)(a) EUTMR). In this respect, Barry relied on the General Court judgment in case T‑307/17 (discussed here) where it was found that reversing the colour scheme of adidas’ three stripes trade mark from black stripes on a white background to white stripes on a black background altered its distinctive character.

The General Court held that the distinctive character of a trade mark that is extremely simple can be altered even by minor changes. The simpler the mark, the less likely it is to have a distinctive character, and the more likely it is for an alteration to affect one of the mark’s essential characteristics and the perception of that mark by the relevant public. Reversing the colour scheme, even if a sharp contrast between the three stripes and the background is preserved, was considered not to be an insignificant variation as compared to the registered form of adidas’ trade mark, this because it was considered a very simple sign that lacked inherent distinctive character.

The Board of Appeal’s decision

The BoA dismissed Barry’s appeal.

First, it held that Hummel’s trade mark enjoyed the presumption of validity because it is registered. The BoA went through case law on similar trade marks and distinguished it from the present case, as follows:
 

• The General Court considered the following sign for ‘shoes’ to lack distinctiveness (confirmed by the CJEU in case C‑307/11) because it could be applied in a decorative way:

The BoA held that Hummel’s trade mark consists of two identical chevrons pointing downwards without stitches that could imply that it is intended to decorate shoes or clothing. Hummel’s trade mark is less simple than the sign shown above.

•  In R347/2021-5, the BoA found that the following signs have a low degree of inherent distinctiveness, inter alia, for clothing, because chevrons are banal and amount to ornamental elements lacking distinctive character:

• The BoA rejected the following position mark (i.e., a mark that protects the specific way in which the sign is placed on or affixed to the goods) for a lack of distinctiveness (R1232/2017-2):

By contrast, the sign in the present case is not a position mark showing a sequence of chevrons.

• The sign

was deemed to lack inherent distinctiveness but acquired distinctiveness through use for footwear (R2604/2017-5 and R208/2022-1).

The BoA found that the present trade mark is not as simple as the adidas logo in case T‑307/17 described above. Here, the two chevrons have a “somewhat below average” degree of distinctiveness. What characterises Hummel’s sign is, according to the BoA, the outline of the two chevrons, their equal thickness and width, and the equal distance between them.

Further, chevrons or V-shaped marks can be presented in multiple ways showing different characteristics, e.g. , , , . Since the essential characteristics of Hummel’s black-on-white trade mark are present in the white-on-black form of use, the latter does not alter the distinctive character of the former.

To support this conclusion, the BoA referred to the Common Communication on the Common Practice of the Scope of Protection of Black and White Marks of 15 April 2014. This is a non-binding document in which the trade mark offices of the EU laid down common practices with respect to black and white trade marks. The document says that a change only in colour does not alter the distinctive character of a trade mark, as long as

(a) the word/figurative elements coincide and are the main distinctive elements,
(b) the contrast of shades is respected,
(c) the colour or combination of colours does not possess distinctive character in itself, and
(d) colour is not one of the main contributors to the overall distinctiveness of the mark.

In this respect, the BoA found:

In the present case, the two chevrons are the main distinctive elements of the mark, the contrast is maintained, the black and white combination is not in itself a distinctive element of the mark.

Finally, the BoA held that its decision is in line with the General Court’s judgment in case T-582/18, in which the court held that the distinctive character of the mark is not altered by the signs and .

Comment

To support the BoA's conclusion, the customs in the relevant sector could have been taken into account. It is common in the fashion sector to apply trade marks to differently coloured backgrounds because colours are an important fashion feature. Adapting a figurative mark (may it be Hummel’s chevrons, Nike’s swoosh, adidas’ three stripes, or Puma’s cat) to the colour of the fashion item is common practice.

Further, it seems debatable whether consumers even perceive the contrast between a sign and its background as a part of the sign. Hummel’s trade mark consists of two specific chevron designs. Adidas’ trade mark consists of three parallel stripes. The colour of the chevrons, stripes and background appear to play a very limited role as long as the chevrons or stripes are perceptible as such, i.e. as long as there is some visible contrast.

Finally, in order to assess whether colour inversion or different colours alter the distinctive character, one should consider not merely the inherent distinctiveness of the registered sign but also its acquired distinctiveness. Consumers, who are familiar with Hummel’s chevron design and adidas’ three stripes, will easily recognize both the original and the colour inverted version as being the same trade mark.