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10 November 2023
ORANGE, BLUE ORIGIN, OFF WHITE and P!NK are all famous brands which consist of or at least incorporate the name of a colour. However, until recently, the EUIPO has been rather reluctant in accepting the registration of colour names as a trademark. In this article we will set out the basic principles for obtaining a registration for a colour name and provide examples of recent cases refusing or accepting the registration of such marks.
In order to be registrable as a trademark, a sign should be capable of identifying the origin of the goods or services at issue. Accordingly, a sign that is descriptive and provides information about the kind, quality, quantity, subject matter, purpose, size or other characteristics of the goods or services applied for should be refused registration. It is thereby sufficient if it can be reasonably expected in the future that the sign is meant to be used, or could be understood by the relevant public, as a description of the goods or services without it being necessary to demonstrate that the sign is already commonly used in business communications or in advertising. A characteristic should however be intrinsic, objective, permanent and inherent to the nature of the goods or services concerned in order to be considered descriptive.
Where a sign consists of or incorporates the name of a colour, the General Court of the EU has clarified in 2019 that such a sign cannot be considered descriptive when the visual aspect is a purely random and incidental aspect which only some of the goods may have and which does not have any direct and immediate link with their nature. The mere fact that the goods in question are more or less usually available in the colour referred to by the mark, among other colours, is irrelevant, since it is not reasonable to believe that for that reason alone that colour will actually be recognised by the relevant public as a description of an intrinsic, objective and permanent characteristic which is inherent to the nature of those goods.
Accordingly, the General Court has accepted the registration of the marks ‘VITA’ (which means ‘white’ in Swedish) in relation to small household appliances and kitchen utensils and ‘OFF WHITE’ in relation to, among others, sunglasses, smartphones, watches, pillows and furniture as both colours only constitute a purely random and incidental aspect which only some of the goods may have and which do not, in any event, have any direct and immediate link with the nature of these goods.
In relation to services, the same principles apply albeit that colour names will generally only be considered intrinsic, objective and permanent characteristics inherent to the nature of the services if the colour itself directly refers to another specific (well-known) concept, such as ‘GREEN’ for agricultural, horticultural or environmentally friendly services or ‘GOLD’ for top-notch, best-in-class services.
Application of the principles to product marks
As the application of these principles appears difficult when dealing with product marks, we will further focus on such marks. As a matter of fact, in the past three years, the EUIPO’s examination division has rejected numerous applications for product marks consisting of a colour name.
For example, the following signs have been refused registration:
- ‘WINE DARK’ in relation to paints, varnishes, lacquers; colorants
- ‘BLUE BLACK’ in relation to cosmetics and printing materials
- ‘GIALLO’ in relation to canopies and building materials
- ‘PURPL’ in relation to lighting apparatus
- ‘JAUNE’ in relation to lighting apparatus
- ‘AMBER’ in relation to street lighting systems
- ‘NOIR’ in relation to bed sheets, blankets, household lines, table linens etc.
- ‘OCHRE’ in relation to clothing, footwear, headgear
- ‘MAGENTA’ in relation to clothing and footwear
- ‘NOIR INTENSE’, ‘ROUGE ULTIME’ and ‘AMBRÉ GLACÉ’ in relation to cocoa and chocolate products
- ‘RUBY RED’ in relation to rosé wines
- ‘PINK’ in relation to alcoholic beverages
- ‘BLACK IRISH’ in relation to various beverages
On the other hand, the EUIPO has still accepted the registration of some marks, whether or not after a successful appeal before the Boards of Appeal:
- ‘INDIGO’ in relation to nail colouring products, nail gel, nail polishers, nail care cosmetics, etc.
- ‘BLUE BLACK’ in relation to hairdressing appliances, soaps, perfumery items, shampoos, disinfectants, etc.
- ‘RED’ in relation to medical instruments
- ‘RED’ in relation to safety, security and signalling devices and software
- ‘MAGENTA’ in relation to computer hardware and software
- ‘PURPLE’ in relation to building materials
- ‘AMARILLO’ in relation to furniture and textiles
- ‘BLUE BLACK THREADS’ in relation to clothing, footwear, headgear
- ‘AMARILLO’ in relation to meat products, eggs, milk, coffee, cocoa, ice cream, bread, honey, etc.
In its judgement of September 14, 2022 regarding the sign ‘BLACK IRISH’, the General Court provided further guidance on how to apply these principles in relation to beverages.
The Court stated that it is common knowledge that colour names are used in the beverages sector in order to distinguish goods on the basis of their colour. As there are many examples of very dark or black beverages, these colours may reasonably be perceived as a significant characteristic of the goods in question which is likely to be important in the choices of consumers. Accordingly, the Court found that the word ‘black’ will be understood as providing information regarding the chocolate content, as an indication of the colour of the coffee and of the lack of any additional substance in that coffee, as a type of tea (black tea) or even as an indication of the very dark colour of the alcoholic beverages. All these meanings show that the term ‘black’ could refer to a characteristic which is objective and inherent to the nature of the goods at issue and intrinsic and permanent with regard to those goods. Accordingly, the registration of such as sign should be refused.
More recently even, in a decision that is still open for appeal, the Board of Appeal of the EUIPO correctly found that the EUTM ‘AMBER’ was registered contrary to the principles set out above and hence declared the registration invalid in relation to chocolate products as it was clear that the term ‘AMBER’ will be understood as a type of chocolate, namely amber (coloured) chocolate (caramelized white chocolate). The fact that the EUTM proprietor had also used the sign AMBER in such a descriptive way before the application date of the EUTM obviously did not help the EUTM proprietor in arguing that the mark is distinctive for chocolate products. Accordingly, the Board of Appeal could clearly state that the word ‘AMBER’ was used descriptively in relation to chocolate goods at the time of the application of the EUTM, as well as thereafter, and that this characteristic was and is indeed used to describe an objectively and inherently relevant characteristic, as it indicated and continues to indicate a kind of chocolate.
We have tried to make clear herein that the assessment of whether the colour of a product is an inherent characteristic of that product will always depend on the circumstances of the case, namely the colour described by the sign at issue, the nature of the goods at issue, and the specific manner in which reference is made to the colour in question.
Since a factual assessment is required, even the trademark examiners may not always correctly assess the principles set out above and may well refuse (or approve) the registration of a mark in violation of these principles. Accordingly, we encourage you to seek advice from your DCP trademark expert to assess whether the name of a colour can be eligible for registration or not and how the above principles will affect the handling of your current or future trademark applications.
 General Court 7 May 2019, Fissler GmbH v. EUIPO, vita, T-423/18, ECLI:EU:T:2019:291, § 45-46.
 General Court 7 May 2019, Fissler GmbH v. EUIPO, vita, T-423/18, ECLI:EU:T:2019:291.
 General Court 25 June 2020, Off-White LLC v. EUIPO, OFF-WHITE, T-133/19, ECLI:EU:T:2020:293.
 EUIPO First Board of Appeal 28 September 2023, INDIGO NAILS sp. z o.o., INDIGO, R 1430/2022-1.
 EUIPO First Board of Appeal 9 June 2021, Whispering Smith Limited, BLUE BLACK THREADS, R 2154/2020-1.
 General Court 14 September 2022, Lotion LLC v. EUIPO, BLACK IRISH, T498/21, ECLI:EU:T:2022:543, §42-47 (see also, in the same sense: General Court 12 June 2018, Fenyves v EUIPO, Blue , T375/17, EU:T:2018:340, §31-32).
 EUIPO First Board of Appeal 28 September 2023, PURATOS v. SUMMERBIRD A/S, AMBER, R 1816/2022-1.