On 14 September 2018, the applicant Philip Morris Products filed an application for registration of an EU trade mark for the word sign “SIENNA SELECTION” for goods contained in Class 34. On 19 June 2019 the examiner refused the registration on grounds of Arts. 7.1 (b) and (c) of the Regulation on the European Union Trade Mark, for being non-distinctive and descriptive of the goods applied for. On 30 July 2019 the applicant lodged an appeal which was dismissed by the Fifth Board of Appeal on 18 December 2019.

The Fifth Board of Appeal considered that the term “sienna”, which is a type of dark brown colour that comes from an earth pigment original from Siena (Italy),  was descriptive of the products to which the trade mark is applied for. The rationale of this decision lies in the characteristics of the tobacco market, arguing that tobacco companies use the colours as an indication of the kind of cigarette which is being sold, thus being the word “sienna” indicative of a fuller flavoured and with stronger nicotine product. For this reason, the Board considered the trade mark to be descriptive and thus non-distinctive.


The General Court first stated that the Board of Appeal was correct in finding that colour can be regarded as a characteristic within the meaning of Art.7.1(c), so a trade mark named after a colour is liable to be refused for registration whenever is reasonable to believe that it will be recognised by the relevant class of persons as being a description of one of the characteristics of the goods or services for which registration is sought. Also, a trade mark which has elements that refer to the taste or flavour of goods may be regarded as descriptive. However, this characteristic must be objective and inherent to the nature of that product or service.

Despite this, the General Court disagrees with the findings of the Board of Appeal. The General Court states that the tobacco companies practice in regards to colours can only be conceived as a well-known fact in regards to colours red and white, but this cannot be extensive for any other colour. Furthermore, the Court states that the relevant public will not immediately and without further thought, perceive the degree of taste and flavour or the nicotine content just from the word element “sienna” in the trade mark.

Indeed, the General Court states that the common practice in the tobacco industry is not so related to colours but rather to the shades, so a stronger taste would be identified with a darker colour whereas a softer taste with a lighter colour. So, the average consumer would have to be aware of the whole colour code used in the marketing of products in order to draw conclusions about the characteristics of the product.

In conclusion, the Board of Appeals erred in finding that the trade mark was descriptive just for containing the word “sienna”, and also in finding that just for this descriptiveness the trade mark was non-distinctive. The decision was annulled in its entirety.

Judgement of the General Court, case T-130/20 dated 9 June 2021