ROSE-tinted reasoning? The General Court on colour words
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Marcel Pemsel
3:04 AM (12 hours ago) 3:04 AM
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ROSE-tinted reasoning? The General Court on colour words
The law on abstract colour trade marks is settled: In principle,
they are only registerable if they acquired distinctiveness. But what
about the words denoting colours? The General Court’s case law is
surprisingly generous, as the recent decision Rose Bikes v EUIPO (ROSE) (case T-56/25) shows.
Background
On 7 February 2024, Rose Bikes GmbH applied for registration of the EU word mark “ROSE”, inter alia, for “clothing; footwear; headgear” in class 25. The examiner of the European Union Intellectual Property Office (“EUIPO”) refused the application as descriptive and non-distinctive. EUIPO’s Board of Appeal (“BoA”) dismissed the applicant’s appeal, who brought an action before the General Court.
The General Court’s judgment
The General Court dismissed the action, holding that the word “ROSE” was descriptive under Art. 7(1)(c) EUTMR.
The judges relied on consistent case law, according to which a sign falls foul of Art. 7(1)(c) EUTMR only if it has a sufficiently direct and specific connection with the goods or services in question, enabling the relevant public to immediately and without further thought perceive a description of the goods or services in question or one of their characteristics.
The decisive question was whether the colour of a product is a “characteristic” of the goods in question. Characteristics in this sense must be easily recognizable features of the goods. It must reasonably be assumed that the mark will be recognized by the relevant public as a description of one of the goods’ characteristics. Even though it is irrelevant whether a characteristic is economically essential or secondary, it must nevertheless be an objective characteristic inherent in the nature of the goods or an intrinsic and permanent characteristic thereof. Finally, it is sufficient if the mark is descriptive in one of its meanings.
The judges confirmed that the English- and French-speaking public understands the word “rose” to refer to the colour pink.
The BoA held that the colour is an important characteristic of clothing, footwear and headgear. Colours allow the expression of one’s personality and certain events require a specific colour dress code. Also, the colour is a search criterion on fashion shopping websites. Competitors must be able to use the colour name to indicate the colour of the goods.
The Court was dissatisfied with this reasoning. The fact that clothing, footwear and headgear are available in a wide variety of different colours and that colours may influence the consumer’s choices in these fields, does not, in the judges’ view, mean that colour constitutes a characteristic of the goods. For colour may be a purely coincidental and arbitrary aspect which, in some circumstances, is present in only a fraction of the goods and which bears no direct and immediate relationship to their nature. The mere fact that the use of a specific colour alongside other colours is more or less common is irrelevant, since it cannot be foreseen that the colour will be perceived by the relevant public as a description of an intrinsic characteristic inherent in the nature of those goods.
To support the result, the Court referred to its previous case law. The word "vita" (the plural form and the definite singular form of the Swedish word "vit", meaning "white") was deemed not descriptive of kitchen and household utensils, since the colour white is merely one of the possible colours of these goods. Likewise, the colour cream in relation to watches and sunglasses was considered a purely incidental and arbitrary aspect, one exhibited by only a fraction of such goods, and does not constitute an intrinsic characteristic or one inherent to the nature of the goods.
The judges concluded that the mere fact that the colour of clothing, footwear and headgear can positively or negatively influence the purchasing decision regarding the goods in question, and serves as a search criterion in online shops, is not sufficient to conclude that colour is necessarily an inherent and objective characteristic of the goods.
However, the BoA further held that pink is closely associated with certain subcategories of clothing, footwear and headgear, namely those intended for babies. They are typically produced in pink or light blue. This was sufficient for the judges to find that, while clothing, footwear and headgear are available in a wide variety of colours, among which pink does not predominate, this does not hold true for the subcategory of "baby goods". Pink cannot be regarded as one of the possible variations of baby clothing, or as a purely coincidental and arbitrary aspect that only a fraction of such goods exhibit. This also applied to clothing for young people.
Thus, "ROSE" was deemed descriptive for the goods in question. The fact that the mark was filed for broad categories was irrelevant because the finding that a mark is descriptive applies not only to the goods for which it is directly descriptive but also to the broader category to which the goods belong, provided that the trade mark applicant has not made an appropriate limitation.
Background
On 7 February 2024, Rose Bikes GmbH applied for registration of the EU word mark “ROSE”, inter alia, for “clothing; footwear; headgear” in class 25. The examiner of the European Union Intellectual Property Office (“EUIPO”) refused the application as descriptive and non-distinctive. EUIPO’s Board of Appeal (“BoA”) dismissed the applicant’s appeal, who brought an action before the General Court.
The General Court’s judgment
The General Court dismissed the action, holding that the word “ROSE” was descriptive under Art. 7(1)(c) EUTMR.
The judges relied on consistent case law, according to which a sign falls foul of Art. 7(1)(c) EUTMR only if it has a sufficiently direct and specific connection with the goods or services in question, enabling the relevant public to immediately and without further thought perceive a description of the goods or services in question or one of their characteristics.
The decisive question was whether the colour of a product is a “characteristic” of the goods in question. Characteristics in this sense must be easily recognizable features of the goods. It must reasonably be assumed that the mark will be recognized by the relevant public as a description of one of the goods’ characteristics. Even though it is irrelevant whether a characteristic is economically essential or secondary, it must nevertheless be an objective characteristic inherent in the nature of the goods or an intrinsic and permanent characteristic thereof. Finally, it is sufficient if the mark is descriptive in one of its meanings.
The judges confirmed that the English- and French-speaking public understands the word “rose” to refer to the colour pink.
The BoA held that the colour is an important characteristic of clothing, footwear and headgear. Colours allow the expression of one’s personality and certain events require a specific colour dress code. Also, the colour is a search criterion on fashion shopping websites. Competitors must be able to use the colour name to indicate the colour of the goods.
The Court was dissatisfied with this reasoning. The fact that clothing, footwear and headgear are available in a wide variety of different colours and that colours may influence the consumer’s choices in these fields, does not, in the judges’ view, mean that colour constitutes a characteristic of the goods. For colour may be a purely coincidental and arbitrary aspect which, in some circumstances, is present in only a fraction of the goods and which bears no direct and immediate relationship to their nature. The mere fact that the use of a specific colour alongside other colours is more or less common is irrelevant, since it cannot be foreseen that the colour will be perceived by the relevant public as a description of an intrinsic characteristic inherent in the nature of those goods.
To support the result, the Court referred to its previous case law. The word "vita" (the plural form and the definite singular form of the Swedish word "vit", meaning "white") was deemed not descriptive of kitchen and household utensils, since the colour white is merely one of the possible colours of these goods. Likewise, the colour cream in relation to watches and sunglasses was considered a purely incidental and arbitrary aspect, one exhibited by only a fraction of such goods, and does not constitute an intrinsic characteristic or one inherent to the nature of the goods.
The judges concluded that the mere fact that the colour of clothing, footwear and headgear can positively or negatively influence the purchasing decision regarding the goods in question, and serves as a search criterion in online shops, is not sufficient to conclude that colour is necessarily an inherent and objective characteristic of the goods.
However, the BoA further held that pink is closely associated with certain subcategories of clothing, footwear and headgear, namely those intended for babies. They are typically produced in pink or light blue. This was sufficient for the judges to find that, while clothing, footwear and headgear are available in a wide variety of colours, among which pink does not predominate, this does not hold true for the subcategory of "baby goods". Pink cannot be regarded as one of the possible variations of baby clothing, or as a purely coincidental and arbitrary aspect that only a fraction of such goods exhibit. This also applied to clothing for young people.
Thus, "ROSE" was deemed descriptive for the goods in question. The fact that the mark was filed for broad categories was irrelevant because the finding that a mark is descriptive applies not only to the goods for which it is directly descriptive but also to the broader category to which the goods belong, provided that the trade mark applicant has not made an appropriate limitation.
Comment
The General Court’s case law on colour word marks is open to criticism.
1. While abstract colours are deemed inherently non-distinctive by the Court of Justice of the EU (“CJEU”) because they only represent a potential colour of the goods, the same is not true for word marks denoting colours? As the Board of Appeal rightly argued, colours are one of the essential characteristics of clothing, footwear, headgear and many other goods and it is not uncommon to describe them in words in online stores. What about this feature is not “intrinsic” and “permanent”? The General Court does not answer this question in the decision discussed above.
If the quality of the goods in the sense of an expectation of know-how in their manufacture is considered a characteristic (see Fauré Le Page and IPKat here),
why not colours? Holding that colours are purely coincidental and
arbitrary aspects of fashion items is more than questionable.
2. The consequence of the decision for the applicant is to file for a new trade mark with an appropriate limitation that excludes baby and youth fashion (to the extent possible under the Postkantoor doctrine; alternatively, the application can be filed for goods for which the sign is non-descriptive, e.g. women's clothing). This begs a follow-up question: How can such a mark be used genuinely?
a. If the trade mark is used for clothing that is pink, would “ROSE” be considered as an indication of the commercial origin or just as a descriptive indication of the colour of the goods?
b. If the mark “ROSE” is used for non-pink fashion items, would it be used deceptively? With the potential consequence of revocation of the mark?
2. The consequence of the decision for the applicant is to file for a new trade mark with an appropriate limitation that excludes baby and youth fashion (to the extent possible under the Postkantoor doctrine; alternatively, the application can be filed for goods for which the sign is non-descriptive, e.g. women's clothing). This begs a follow-up question: How can such a mark be used genuinely?
a. If the trade mark is used for clothing that is pink, would “ROSE” be considered as an indication of the commercial origin or just as a descriptive indication of the colour of the goods?
b. If the mark “ROSE” is used for non-pink fashion items, would it be used deceptively? With the potential consequence of revocation of the mark?
The General Court would probably not have an issue with these questions because colour are not a characteristic of clothing, meaning that consumers cannot be deceived about it. But does that not seem strange?
If the CJEU weighed in, would it apply its reasoning for abstract colour marks to colour indications?
The picture is by Оксана Карпова and used under the licensing terms of pexels.com.
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