OFF-WHITE has won its appeal at the General Court to register the OFF-WHITE black and white logo trade mark in the EU following the decision of the EUIPO that the mark is inherently descriptive and non-distinctive.
Off-White is an Italian high-fashion streetwear label, established in 2013 by Virgil Abloh (previously Louis Vuitton’s artistic director). It has collaborated with brands which are perhaps unexpected for a major fashion label, including Ikea and Evian, as well as other fashion and sportswear brands such as Levi and Nike, the latest “Nike x Off-White” release for the Nike Air Jordan 4 trainers selling out instantly.
Off-White is known for its quirky branding and has a fair bit of experience in trying to register in the European Union (EU) its brands, including the ‘X’ logos and black and white diagonal stripes, which can be seen featured on its clothing and accessories.
On 7 October 2017, Off-White filed an EU trade mark application, at the EU IP Office (EUIPO) for a figurative mark which consisted of a black and white logo with the words ‘OFF-WHITE’ in italics on an elongated hexagonal shape, comparable to a street sign, as shown below:
This application covered, amongst other goods, the following:
Class 3 including cosmetics and fragrances;
Class 9 including glasses, sunglasses and cell phone covers;
Class 14 including jewellery, watches and wall clocks; and
Class 20 including pillows; cushions; beds; mattresses; furniture.
Interestingly, this application did not cover Class 25, which would cover goods of clothing and footwear that they’re best known for selling. However, Off-White do own an earlier EU trade mark registration for the word mark OFF-WHITE, which covers this class.
On 31 January 2018, the EUIPO Examiner partially rejected the application in respect of classes 9, 14 and 20 on the basis of Article 7(1)(b) and Article 7(1)(c) of Regulation (EU) 2017/1001 (EUTMR), which states that:
1. The following shall not be registered:
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.
It was rejected under Article 7 because the Examiner held that the mark simply referred to the colour of the goods covered by the application and so could not function to indicate the origin of the goods.
On 28 March 2018, Off-White filed an appeal at the EUIPO against the decision.
The decision issued by the Second Board of Appeal (BOA) at the EUIPO dismissed the appeal against classes 9 and 20 and the following goods in Class 14 – ‘watches; wall clocks; horological and chronometric instruments; watch bands; watch cases; presentation boxes for watches; jewelry cases’ and ‘precious stones, semi-precious stones’ on the grounds that they considered the mark to be descriptive and lack distinctive character. This is explained further below.
Issues raised at the appeal stages with the BOA
1. The meaning of the word element ‘Off-White’
The BOA held that the relevant public was the general public and professionals (as the goods are everyday consumer goods. This was not disputed by Off-White) and argued that the term ‘Off-White’ referred to a “white colour with a grey or yellowish tinge”.
2. Whether there was a direct and specific relationship between the word element ‘Off-White’ and the goods in question (thereby falling foul of Article 7(1)(c) EUTMR)
“It found, in essence, that the term ‘off-white’ referred to a colour which could reasonably be perceived as a characteristic that was significant and clearly relevant for those goods. The Board of Appeal concluded that that term referred to the visual aspect of those goods and that, evidently, it would be perceived as a descriptive reference to the colour of those goods.
Furthermore, it found that the figurative elements of the mark applied for, consisting of a simple, black, hexagonal shape of a label on which the term ‘off-white’ is depicted in slim, white, sloping characters, were extremely simple and purely decorative in character and not capable of distracting the public’s attention from the descriptive message conveyed by the word element” (paragraph 7 – Case T 133/19).
3. Whether the mark applied for is devoid of distinctive character (thereby falling foul of Article 7(1)(b) EUTMR)
The BOA held that because of the mark’s descriptive character, it was therefore devoid of distinctive character and incapable of performing the ‘essential function’ of the trade mark, being an indicator of brand origin.
However, the BOA did uphold the Applicant’s appeal in relation to the following remaining goods in Class 14:
‘jewellery; lapel pins [jewellery]; cufflinks; jewellery and costume jewellery of precious metals and their alloys and coated therewith, namely rings, earrings, bracelets, brooches, pendants, charms, chains and chains for watches, necklaces, medals, medallions; key rings of precious metals and their alloys or coated therewith’ .
This was because these goods by nature are not known by colour names but by different colours of metal such as ‘gold’, ‘silver’ and ‘rose gold’ and therefore ‘Off-White’ could not be descriptive for these goods (paragraph 9 – Case T-133/19).
The Applicant wasn’t happy with this decision and therefore, appealed this further to the General Court.
Decision of the General Court
On 25 June 2020, the General Court issued its decision, which dealt with the issues above as discussed by the BOA. To take each of these in turn:
1. The meaning of the word element ‘Off-White’
The GC deemed the relevant public to be the English-speaking public in the EU (and so at least the UK, Ireland and Malta).
The GC held that the BOA’s interpretation of ‘Off-White’ being a “white colour with a grey or yellowish tinge” was correctly interpreted.
2. The link between the word element ‘Off-White’ and the goods in question
Firstly in relation to Article 7(1)(c) –
The GC disagreed with the BOA’s assessment. They found that:
- It cannot be ruled out a priori that the colour of a product may be one of the characteristics referred to in Article 7(1)(c) of the EUTMR.
- The colour would have to be a characteristic which is objective and inherent to the nature of the goods in question, as well as being intrinsic and permanent for those goods, which in this case is not.
- The BOA’s assessment in relation to the aesthetic value and contribution of that colour involves a subjective assessment and “personal assessments of individuals comprising the relevant public cannot be used to determine how a sign may be perceived by the public as a whole”.
- Further, as the mark ‘Off-White’ does not constitute the sole or predominant colour in relation to the goods in question and is presented only as a “purely random and incidental aspect” which some goods may have and others may not, the GC found that the mark did not have any direct and immediate link with their nature.
(paragraphs 43- 45 – Case T-133/19)
As such, the GC rejected the BOA’s finding that the word element ‘Off-White’ had a sufficiently direct and concrete relationship with the goods in question and was therefore considered to be descriptive, and so the application did not fall foul of Article 7(1)(c) of the EUTMR.
In relation to Article 7(1)(b)
The GC flagged the importance of noting that Article 7(1)(b) is an independent ground and requires separate examination (although there is some overlap between the two provisions). Therefore, it does not necessarily follow that if a mark is found to be descriptive under Article 7(1)(c) that it automatically lacks distinctive character under Article 7(1)(b) and vice versa.
Therefore, the GC disagreed with the BOA’s assessment that because the mark was considered to be descriptive meant that it was devoid of distinctive character, and therefore the application did not fall foul of Article 7(1)(b) of the EUTMR.
As the GC found that the mark was not descriptive, they did not have to look at the distinctiveness of the stylisation of the mark and so this wasn’t explored in its decision.
In light of this recent success, on 22 July 2020, Off-White filed a new EU trade mark application for the plain word mark OFF-WHITE covering an expanded list of goods in the same classes of Class 3, 9, 14 and 20. It will be interesting to see if the EUIPO follows the General Court’s decision for the registrability of the figurative mark, for the plain word version.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.