Color indications can be protected as trade marks if they are not perceived as an indication that describes an intrinsic characteristic which is inherent to the nature of the goods or services concerned (General Court of the European Union (GCEU), judgment of May 7, 2019, T-423/18 Fissler v. EUIPO [“vita”]).
In the case at hand, the applicant sought trade mark registration for the word mark “vita” for several kitchen utensils in classes 7, 11 and 21. The EUIPO rejected the application in accordance with Art. 7 (1) (b) and (c) of Regulation No 207/2009 (Community Trade Mark Regulation, CTMR) which corresponds toArt. 7 (1) (b) and (c) of present Regulation No. 2017/1001 (European Union Trade Mark Regulation, EUTMR). It pointed out that the sign “vita” is the definite plural form of the word ‘vit’, which means ‘white’ in Swedish, and that the goods at issue could exist in white and that the sign could therefore be descriptive of them.
The General Court did not confirm these findings. It found that a characteristic, within the meaning of Art. 7(1)(c) CTMR/EUTMR, must be ‘objective’ and ‘inherent to the nature of that product’ or service and ‘intrinsic and permanent’ with regard to that product or service. According to the court, the color ”white” (“vita”) did not meet this requirement, since it were a purely random and incidental aspect which only some of the claimed goods may have and which does not, in any event, have any direct and immediate link with their nature. Consequently, the GCEU denied the applicability of Art. 7(1)(c) CTMR/EUTMR. In addition, it held that also Art. 7(1)(b) CTMR/EUTMR (lack of distinctiveness) would not pose an obstacle, as the EUIPO, when applying this absolute ground for refusal, again incorrectly argued with the alleged descriptive nature of the trade mark “vita”.
Taking into account the European Courts’ generally rather strict approach regarding the absolute grounds for refusal of Art. 7 (1) (b) and (c) CTMR/EUTMR, this new decision comes as a surprise. Generalizing, it could mean that signs indicating a product or service characteristic, which can be chosen more or less arbitrarily, are not barred from registration. Besides color indications, this could also apply to, for example, shape indications and size or proportional indications. It remains to be seen, however, if this new piece of case law will indeed mark such a turning point.