L'Oréal overcomes provisional refusal of OR ROUGE for Class 3 goods

The Croatian IP Office has held that a significant portion of consumers in Croatia do not speak French and, therefore, will not perceive the mark OR ROUGE (meaning ‘red gold’ in French) as being descriptive of some of the characteristics (ie, the colour) of the products at issue (Decision No 910-08/14-010/022, September 26 2014). The office thus reversed its initial refusal to register the international trademark OR ROUGE (International Registration 1151247) in Croatia.

The office had provisionally refused protection of L’Oréal’s trademark OR ROUGE based on Articles 5.1(2) and 5.1(3) of the Croatian Trademark Law due to its alleged descriptiveness and lack of distinctiveness for part of the goods covered by the trademark in Class 3 (ie, “cosmetics; powders for skin, face, body, eye, lip, neck, hand, leg and foot care; make-up preparations) of the Nice Classification. The examiner held that the trademark OR ROUGE described important characteristics of the products (ie, the colours gold and red) and that consumers would perceive OR ROUGE as a colour specification, rather than a trademark.

L’Oréal responded to the provisional refusal by arguing that the trademark OR ROUGE was sufficiently distinctive to distinguish its products in Class 3 from identical and similar products of other manufacturers. L’Oréal argued that the trademark OR ROUGE does not exclusively describe the type, quality, quantity, purpose, value and/or geographic origin of the goods in Class 3 for which protection was sought. L’Oréal further argued that a significant part of Croatian consumers do not understand and use the French language; therefore, they would not understand the literal meaning of OR ROUGE. L’Oréal also pointed out that the IP Office had previously granted protection to a number of word marks consisting of “verbal” combination of colours in Class 3 and that the trademark OR ROUGE should receive the same treatment.

The IP Office held that, although OR ROUGE does describe certain characteristics of the products (namely, the golden-red colour and/or the colour of red gold), a significant part of consumers in Croatia do not speak French and will not recognise the literal meaning of the trademark. In its view, the average Croatian consumers will not perceive OR ROUGE as being descriptive of certain characteristics of the products in Class 3. Therefore, it decided that the trademark OR ROUGE was suitable for protection for these goods.

Maruska Bracic and Gordana Pavlovic, Cabinet Pavlovic, Brussels and Belgrade