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The challenges of registering colour marks

20 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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The content on this page is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.

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