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The challenges of registering colour marks
23 August 2010
In the recent case of X-technology Swiss GmbH v OHIM
the EU General Court upheld an OHIM Board of Appeal decision
rejecting a Community Trade Mark Application for a mark consisting
of the orange colouring of the toe of a sock. The mark had no
distinctive character and was thus incapable of registration.
For a trade mark to have distinctive character it must serve to
identify the goods or services in connection with which it is to be
registered as originating from one particular origin. Distinctive
character is assessed by reference to:
- the goods or services covered by the application
- how those goods or services are perceived by the relevant
public
The Court held that the perception of the relevant public is
influenced by the nature of the mark itself and, here, the mark
(being orange colouring on a sock toe) was an intrinsic and
indistinguishable part of the goods themselves. Given this,
consumers would only see the mark as distinctive where it departs
significantly from the norms or customs of the sector; in this case
the mark did not.
The Court also applied existing case law on the distinctiveness
of colour marks and the capacity of colours and combinations of
colours to identify commercial origin. It was held that the colour
orange was commonly applied in the hosiery sector in combination
with other colours. The fact that the goods were directed at the
“technical” or “functional” hosiery market was irrelevant as only
the general category of “socks” and “hosiery” covered in the
application was relevant.
Unlike with certain items of clothing or footwear, socks are
every day, relatively low priced goods and the relevant public pays
a low level of attention to such goods when making their
purchasing decision. Whilst consumers are generally attentive when
choosing articles of clothing and footwear, this is not applicable
to articles of hosiery which are not normally tried on prior to
purchase. In these circumstances, the applicant needed to
demonstrate that the mark had intrinsic distinctive character. No
evidence to this effect was submitted. The OHIM Board of Appeal
decision was upheld that the mark would be perceived either as
decoration or as a functional element connected with the
reinforcement of the toe, not an indication of origin and so
incapable of registration.
Whilst not ground breaking, this case serves as a useful
reminder that colour marks are rarely intrinsically distinctive.
For an application for a colour mark to succeed, you need to show
firm evidence that the colour in question comprising the mark is
seen by the relevant public as an indication of commercial
origin.
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