Background of the case

On October 2017, the applicant OFF-WHITE LLC (hereinafter OFF WHITE), filed an EUTM application for the following figurative sign in Class 3, 9, 14 and 20.

On January 2018, the examiner partially refused the application for the goods in Classes 9,14 and 20 since those were considered not distinctive and descriptive. An Appeal was filed by the applicant which was dismissed for some of the goods in Class 14 and for all the goods in Class 9 and 20.

The applicant claims before the General Court to annul the contested decision in so far as it rejects the aforementioned Classes and goods and alleges infringement of Article 7.1, b) and c) –  grounds based on distinctiveness and descriptive character.

Decision of the Court

The Court pointed out that the following considerations when issuing a decision are to be assessed:

The meaning of the word element OFF-WHITE.

The applicant claims that the colors used in the trademark application are not white per se (there is a catalogue of different shades used), however the Court rejects the argument and states that the term “off white” does not have several meanings and cannot refer to an amorphous, edgy and artistic concept. Therefore, the Board of Appeal correctly established the perception of the word element “off-white” by the relevant public as referring to a color very close to white.

The link between the word element OFF-WHITE and the goods in question.

The applicant claims that there is not sufficient direct and specific link between the word element and the goods in question. The Court agrees with the applicant and states thatalthough off-white corresponds, as the applicantacknowledges, to one of the possible color variations which those goods may have, it does not, however,constitute the sole or even predominant color. That coloris presented only as a purely random and incidental aspect which only some of those goods may have and which does not, in any event, have any direct and immediate ink with their nature. Thus, the mere fact that the goods in question are more or less usually available in off-white, among other colors, is irrelevant”.

Lastly, the Court discusses if the mark has distinctive character. In this regards, it points out that both grounds can be assessed individually, and as a general rule both can be imposed following different reasoning. However, in this particular case, EUIPO argued that the subject mark lacks distinctiveness based on the descriptive character of the word elements. Since it has been concluded that the mark is not descriptive, the Board of Appeal infringed article 7.1, b) and therefore the decision of the Second Board of Appeal is annulled.

Case T133/19. Judgement of the General Court (Ninth Chamber) of 25 June 2020