Federal Administrative Court considers distinctiveness of 'colour + label' mark

The Federal Administrative Court has overturned a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to register Philip Morris AG's trademark BLACK LABEL for various goods in Class 34 of the Nice Classification (Case B-5168/2011, March 13 2013).

On February 21 2011 Philip Morris applied for the registration of the trademark BLACK LABEL for goods in Class 34 in Switzerland. The IGE refused to register the sign, considering that it was commonly used as a furnishing element for the products at issue (in the sense of a “black tag” used on the products). Accordingly, the IGE found that BLACK LABEL lacked distinctiveness.

Philip Morris appealed the final refusal of the IGE to the Administrative Court.

The Administrative Court analysed the sign BLACK LABEL and divided it into the elements 'black' and 'label'. It concluded that both words were readily understandable by the relevant consumers. 'Black' would be understood as a colour, while 'label' would be understood as a tag, designation, title, signature or sticker. Further, according to constant practice, the element 'label' was considered to belong to the public domain; therefore, it was not distinctive per se.

However, considering the combination of the element 'label' and the colour black, the court found that there was no common or descriptive use of the sign as a whole for tobacco goods, especially as 'black' was not a quality indication or a commonly used description in relation to tobacco. Although some cigarette producers may use the colour black for their packaging or to refer to specific tobacco types, it was not proven that the colour black had any particular meaning with regard to tobacco in general. Therefore, the court concluded that BLACK LABEL was distinctive and ordered the IGE to register the mark.

Whether a 'colour + label' mark will be considered to be distinctive depends on the colour and the goods at issue. For example, the former Federal Board of Appeal for Intellectual Property considered the mark GREEN LABEL - indicating the environmental sustainability of whisky - to be descriptive. In another decision issued in 2006, the Board of Appeal considered the trademark RED LABEL for goods in Class 34 to be weak but distinctive, holding that the colour red had only a limited scope of protection.

Marco Bundi, Meisser & Partners AG, Klosters