The case: Trademark protection for colours can allow for a specific customer approach. The well-known US manufacturer of high fashion and streetwear, OFF-WHITE LLC, therefore wished to add another label to its range of brands. It filed an application for a Community trademark for jewellery, eyewear, bedding and furniture:

 

Virgil Abloh, the late founder of the company and fashion designer, named the company’s OFF-WHITE trademarks after the colour, in English, off-white, a shade of white that has a grey or yellow tinge. It is less cold and harsh than pure white.

However, the EUIPO refused the application. It acknowledged that off-white was an elegant and subdued colour and was clearly relevant to the visual effect of the goods applied for. It also played an important role in consumer choice. OFF-WHITE could therefore designate an essential characteristic of the goods and, as such, the term was not registrable. The figurative elements of the mark were too minimal to confer the necessary distinctiveness.

The applicant appealed to the General Court of the European Union, arguing that OFF-WHITE simply means ‘almost white’. The applicant maintained that even as a colour indication, the word does not describe an essential characteristic of the products.

Who was right?

In order to be protected as a trademark per se, a designation must not consist exclusively of an indication that is capable of describing in an immediately recognisable manner an essential characteristic of the goods or services. All competitors must also be able to use the same indication to refer clearly and unambiguously to such characteristics of their goods or services. These are characteristics that are objectively and permanently inherent in the goods or services. The subjective or economic significance of such characteristics is irrelevant.

A colour can constitute such an objective and permanent characteristic of goods, because a colour can be part of the appearance of the goods themselves. Even colours that are not especially definite, such as light blue, can constitute an essential characteristic of the goods, which prevents it being protected as a trademark – without having achieved the necessary level of brand awareness on the part of consumers.

However, the registered jewellery, eyewear, bedding and furniture products are not only available in off-white. They come in a variety of colours and colour combinations, and off-white is not even the predominant colour of these products.

Consumers therefore do not see off-white as an essential characteristic that is permanently immanent in the company’s jewellery, eyewear, bedding and furniture.

It is true that this colour can give a particular elegance and attractiveness to products. However, that does not make it an objective characteristic of the goods per se. Moreover, the impression of elegance can only ever be based on a subjective perception. Two people may perceive the colour and its effects differently.

Since OFF-WHITE does not describe an objective characteristic inherent in the goods, it is capable of performing the essential function of a trademark and of indicating the commercial origin of the goods covered. The indication of colour has distinctive character as a trademark.

As a result, OFF-WHITE was registered as an EU trademark for all the goods applied for.

General Court of the European Union, 25 June 2020, T-133/19.

Learnings: If you develop a brand that relates to your products, make sure it doesn’t consist exclusively of elements that can recognisably describe essential features of your products. Essential features are those that are objectively and permanently inherent in the goods in question. Subjective evaluations are just as irrelevant as the question of whether such a feature is economically significant or not. It is particularly important to bear this in mind when it comes to trademark protection for colours.