Is A Word Mark Descriptive Of A Colour? A Lesson For Brand Owners

Is a word mark with a non-intrinsic colour in its title descriptive in relation to the goods it represents? Jade MacIntyre finds out

KEY POINTS

• Word marks denoting a colour can avoid being caught under Article 7(1)(c) EUTMR if the colour is not “inherent and intrinsic” to the goods in question.
• There is a difference between characteristics of goods that are “inherent and intrinsic” to the goods, and those that are “optional or accidental”.
• A sign can be descriptive even if it is descriptive of only some of the goods for which registration is sought.

The General Court dismissed an action brought by Rose Bikes GmbH against the EUIPO and provided guidance on assessing whether a word mark denoting a colour is descriptive in relation to the goods it covers, under Article 7(1)(c) of the EU Trade Mark Regulation (EUTMR). The Court held that, although the colour pink is not an objective characteristic of all clothing, footwear or headgear inherent in those goods, it is for certain categories of those goods, namely baby and youth clothing.

Background

Rose Bikes GmbH, a German cycling and lifestyle brand, filed an application on 7th February 2024 to register the word mark ROSE as an EU trade mark for goods in class 25, namely “clothing; footwear; headgear”. On 10th July 2024, the EUIPO Examiner refused the application on two grounds: descriptiveness under Article 7(1)(c) EUTMR and lack of distinctive character under Article 7(1)(b) EUTMR. Rose Bikes appealed to the EUIPO’s Second Board of Appeal (the BoA), which dismissed the appeal on 28th November 2024.

In its decision, the BoA identified the relevant public as the English-speaking and French-speaking general public of the EU and found that the word ROSE would be understood by that public as referring to the colour pink (in both English and French). It held that colour constituted an essential, not arbitrary, characteristic of the goods, given that the colour of clothing, footwear and headgear could be the decisive factor in their selection, allowing the wearer to express personality. It also observed that baby clothing is typically pink or light blue, and that pink is frequently worn by adolescents. It concluded that colour had a sufficiently direct and specific relationship with those goods, with the result that it was descriptive in relation to them. On the distinctive character of the mark, the BoA concluded it would simply be perceived as factual information indicating that the goods were pink-coloured, rendering it devoid of the minimum distinctive character required under Article 7(1)(b) EUTMR.

Decision of the General Court

The central question for the Court was whether the word ROSE, meaning the colour pink, is descriptive of a characteristic, being the colour, of clothing, footwear and headgear within the meaning of Article 7(1)(c) EUTMR.

Rose Bikes argued that ROSE could not be descriptive of a characteristic because: (i) the colour pink is not the main or only colour of the goods in question; (ii) it is just an “accidental and contingent” aspect of the goods; and (iii) it would only apply to a small amount of the goods, with no connection to the nature of the goods.

The Court dismissed the action with mixed reasoning. Referring to previous case law, the Court noted that word marks denoting colours were not descriptive where the colours in question were only one of the possible colours of those goods covered by the marks. ‘Vita’, being the plural for ‘vit’, meaning ‘white’ in Swedish, was not descriptive of the kitchen and household utensils at issue, because white was only one of the possible colour variations of those goods. Similarly, for watches and sunglasses, off-white was merely an accidental and contingent aspect that could be assumed by only some of those goods, and did not constitute an intrinsic or inherent characteristic of the nature of those goods. The Court held that it was not reasonable to conclude that, in circumstances where the goods at issue are available in many colours, the relevant public would recognise one colour mark as a description of a characteristic intrinsic and inherent to the nature of those goods.

The Court disagreed with the BoA and noted that, just because colour may influence a consumer’s choice of clothing or decision to purchase, that does not mean that colour is an “inherent and objective” characteristic of those goods. But it did agree with the BoA that the colour here, pink, was “closely linked” with some types of clothing. In particular, it noted that the colour pink is particularly important in baby clothes, shoes and headgear, and that those goods are usually marketed in only two colours (blue and pink). Therefore, it was an intrinsic and inherent characteristic of the nature of clothing, footwear and headgear for babies and young people. Consequently, ROSE would be perceived as a descriptive indication of the colour of those goods. Following this, the action was dismissed under Article 7(1)(c) EUTMR.

The decision confirmed, as under previous case law, that even if a mark is descriptive of only some of the goods or services falling within a category mentioned, this does not prevent the whole application from being rejected.

The distinctiveness point was not examined, given the Court’s decision on Article 7(1)(c) EUTMR. Each party was ordered to bear its own costs.

Although the Court dismissed the action, it gave a clear inclination that Rose Bikes could file a new application with an exclusion around baby and youth clothing.

Comment

• There is a distinction between characteristics that are intrinsic and inherent to the nature of goods – which may fall under Article 7(1)(c) EUTMR – and properties that are merely available options among many. The fact that clothing can be pink does not mean that the colour pink is a characteristic of clothing in the Article 7(1)(c) sense. There must be a sufficiently direct and concrete link, immediately perceivable by the relevant consumer.
• The outcome might differ for goods where a particular colour is intrinsically associated with the product’s nature or function. For example, ‘white’ for wedding dresses or ‘green’ for camouflage clothing. The Court’s reasoning leaves room for such distinctions.
• This decision can be used as useful authority when responding to objections from registries that a colour word is descriptive of goods simply because those goods are available in that colour.

Note: the original decision is in German and French. This case comment is based on an unofficial translation into English.

Originally published by CITMA.

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