- The EUIPO Board of Appeal concluded that the two colors and their combination lacked distinctiveness
- The Court agreed that the trademark fell within the grounds for refusal set forth in Article 7(1)(b)
- The EUIPO was correct in referring to the relevant case law on color combinations, such as Heidelberger Bauchemie
In Lotus Bakeries v. EUIPO (Case T-1096/23), the General Court addressed the absolute ground for refusal set forth in Article 7(1)(b) of Regulation 2017/1001, which prohibits the registration of trademarks that lack distinctive character.
Background
On February 22, 2022, Lotus Bakeries filed an application to register the following color trademark (EU trademark application No. 018659684) for goods in Class 30:
On February 24, 2023, the EUIPO examiner rejected the application on the basis of Article 7(1)(b), finding that it lacked distinctiveness.
Lotus Bakeries filed an appeal against the examiner's decision. That appeal was dismissed by the EUIPO Board of Appeal, which found that the two colors (red and white) and their combination lacked distinctiveness.
Lotus Bakeries filed an appeal with the General Court, alleging infringement of:
- Article 7(1)(b);
- Article 94; and
- the principles of proportionality and equal treatment.
Decision
The General Court confirmed that the trademark applied for lacked any distinctive character. The Court found that the Board of Appeal had conducted a reasoned and non-contradictory analysis of the sign when it examined:
- whether the relevant public was able to identify the commercial origin of the sign;
- the argument that the alleged use of the trademark was irrelevant to the analysis of the sign’s distinctiveness; and
- the presence of the colors red and white in the market.
The Court found that the overall impression of the mark applied for had been correctly assessed, even though the Board of Appeal had first analyzed the colors (red and white) separately. The mark applied for consists of a simple combination of two colors arranged in a series of outline-less stripes, such that the sign could be used for advertising or promotional purposes.
With regard to Lotus Bakeries’ claim that the Board of Appeal misapplied the case law, in particular the judgment Libertel (Case C-104/01, May 6, 2003), the Court held that the Board was correct to refer to other relevant case law concerning color combinations, such as Heidelberger Bauchemie (Case C-49/02, June 24, 2004).
Lotus Bakeries also argued that the Board of Appeal had taken into account the descriptive nature of the mark applied for (Article 7(1)(c)), whereas its decision was based solely on Article 7(1)(b). The Court found that this was not the case. In essence, the Board had refused the mark applied for because the use of the colors red and white was common in the market and because their combination would not allow the mark to be perceived as an indication of commercial origin. Its additional considerations regarding the possible perception of the color combination as decorative, promotional, or functional were not made for the purpose of analyzing a potential generic nature, but rather to determine to what extent the relevant public would perceive the trademark as serving a function other than that of an indication of commercial origin.
Accordingly, the Court agreed with the Board of Appeal that the trademark applied for fell within the grounds for refusal set forth in Article 7(1)(b), and that, consequently, Lotus Bakeries could not validly rely on prior decisions of the EUIPO, the EUIPO Guidelines, or its training materials to challenge that conclusion.
Comment
This ruling sheds light on the assessment of the distinctiveness of trademarks consisting of a combination of colors, taking into account not only the trademark itself but also the market in which it operates, in order to determine its ability to convey information to consumers, particularly regarding the commercial origin of the goods and/or services. It also provides valuable guidance on the formal aspects of decisions, including all elements relating to their reasoning and the application of the principles of proportionality and equal treatment.
Patricia Gómez, Junior Associate in the Trademark Practice Group at Elzaburu.