Board of Appeal erred in merely deducing that OFF-WHITE is not distinctive based on its alleged descriptiveness

• The General Court has annulled a decision of the Board of Appeal refusing registration of the mark OFF-WHITE
• The board erred in finding that OFF-WHITE had a sufficiently direct and concrete relationship with the goods and was thus descriptive of them
• The board’s finding in relation to distinctiveness was incorrect by virtue of its incorrect conclusion in relation to Article 7(1)(c)

In Off-White LLC v European Union Intellectual Property Office (EUIPO) (Case T-133/19, 25 June 2020), the General Court has annulled the decision of the Second Board of Appeal of the EUIPO of 14 December 2018 insofar as it refused registration of the figurative sign OFF-WHITE (depicted below) as an EU trademark for goods in Classes 9 and 20, and also for a selection of goods in Class 14.

The EUIPO was also ordered to bear its own costs in relation to the appeal and to pay those incurred by Off-White LLC, including the expenses incurred by it in the appeal proceedings before the Board of Appeal.

Background

On 17 October 2017 Off-White applied to register the above figurative mark as an EU trademark in Classes 3, 9, 14 and 20. The application was partially refused by the examiner on 31 January 2018 with respect to the goods in Classes 9, 14 and 20 on the basis of Article 7(1)(b) and (c) in conjunction with Article 7(2) of Regulation 2017/1001. The applicant appealed.

By decision of 14 December 2018, the Second Board of Appeal dismissed the appeal as regards all the goods in Classes 9 and 20 and also certain goods in Class 14 on the grounds that the mark applied for was descriptive for those goods and that it lacked distinctive character. The board concluded that the term ‘off-white’ referred to a white colour with a grey or yellowish tinge, and would be perceived as a characteristic of the goods and a descriptive reference to the colour of those goods. The figurative elements of the mark were decorative and did not overcome the descriptive message of the word element. Because of its descriptive character, the mark was also devoid of any distinctive character. 

On 28 March 2018 the applicant appealed this decision to the General Court.

Decision

Two pleas were proffered by the applicant, namely;

• infringement of the principles of sound administration, legal certainty and equal treatment, and of the obligation to state reasons; and
• infringement of Article 7(1)(b) and (c) of Regulation 2017/1001.

The second plea was examined first. Referring to relevant case law on the terms outlined in Article 7(1)(c), the General Court held that the legislature made it clear that the terms listed in Article 7(1)(c) must all be regarded as corresponding to characteristics of goods or services and that that prescribed list is not exhaustive. A sign can be refused registration on the basis of this provision only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics. It cannot be ruled out a priori that the colour of a product may be one of its characteristics. However, it did not follow that off-white constituted a characteristic which is objective and inherent to the goods in question, as well as being intrinsic and permanent for those goods. Rather, the considerations set out by the board in relation to the characteristics of the colour ‘off-white’ consisted of subjective, personal assessments of individuals comprising the relevant public.

The court thus concluded that the board had erroneously decided that the word element ‘off-white’ had a sufficiently direct and concrete relationship with the goods in question and thus was descriptive of those goods.

Article 7(1)(b) was then examined. The court held that the board’s finding in relation to the distinctive character was incorrect by virtue of the incorrect conclusion drawn by the board in relation to Article 7(1)(c), discussed above. The court held that the case law dictates that the fact that a mark is not covered by one of the absolute grounds for refusal does not mean that it cannot be covered by another. In particular, it cannot be concluded that a mark is devoid of any distinctive character in relation to certain goods or services purely on the ground that it is descriptive of them.

In conclusion, the decision of the board was annulled.