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- The EUIPO Cancellation Division has partially upheld cancellation applications against ORANGE marks in respect of certain goods in Classes 11, 16, 18 and 25.
- Whilst colours are non-distinctive per se, names of colours are only non-distinctive when colour is an inherent characteristic of the good or service.
- The decisions appear to limit the scope of applications for names of colours in respect of stationary, printed cards, clothing and luggage, but maintain the scope for protection of names of colours in respect of computer products, appliances and a vast array of services.
In Razvan Radu v Orange Brand Services, the EUIPO Cancellation Division has partially upheld cancellation applications in respell of certain goods in Classes 11, 16, 18 and 25.
Background
Orange is one of the world’s leading telecommunications and digital service providers. It has registered numerous trademarks around the world for ORANGE, including in the European Union.
Applicant Razvan Radu filed two revocation applications before the EUIPO alleging that Orange’s ORANGE and the combination mark below were invalidly registered.
Applications for invalidity
Registration No 127, 837, filed on 1 April 1996, covered goods and services in Classes 9, 16, 18, 25, 35, 36, 37, 38, 41 and 42.
Registration No 17 934 186, filed on 24 July 2018, covered goods and services in Classes 9, 11, 35, 37 and 42.
The applicant argued that Orange had registered 38 ORANGE-incorporating trademarks since 1996, which it claimed was an attempt to prevent others from using this descriptive word. It claimed the following:
- ORANGE is descriptive of goods in Class 9.
- ORANGE is commonly used for goods and services in Classes 11, 16, 18, 25, 35, 36, 37, 38, 41 and 42.
- Consumers will be deceived by the registered marks given that Orange, United States is a geographic location.
Additionally, the applicant argued that orange is a commonly used colour for European banks and European telecommunications companies.
Orange argued that consumers would understand ORANGE as referring to the fruit rather than the colour, rendering it sufficiently distinctive. Orange also pointed out that Orange, California is a small city and that consumers would not associate it with the registered marks.
Decision
Descriptiveness and non-distinctiveness – Articles 7(1)(b) and (c)
Article 7(1)(c) prohibits the registration of trademarks designating the essential characteristics of a good or service. A specific relationship between the sign and the challenged goods is required. This relationship must be viewed against the goods from the perspective of the relevant public.
The court distinguished between the relevant public in Classes 16, 18 and 25 (general public) and in Classes 9, 11, 35, 36, 37, 38, 41 and 42 (both general and professional public).
The court held that colours are descriptive when they will be perceived as an objective characteristic of the good or service (Paragraph 2, Page 8 of Case C 59 543). The key test is whether the characteristic will be recognisable, irrespective of whether it is ancillary.
The court held that ‘orange’ is descriptive of stationery, writing instruments and printed matter, given that colour can be essential to buyers of these goods. The court found similarly in respect of goods in Classes 18 and 25, given that consumers would be accustomed to colour being an intrinsic characteristic of clothing and handbags, for example, and decisive for purchasing. Finally, the court found colour to be intrinsic of light bulbs. However, the court did not believe that these conclusions applied to all goods covered by Orange’s registration in Class 16, nor of ‘walking sticks’ in Class 18.
Turning to the remaining goods and services, the court did not believe that consumers would perceive ‘orange’ as more significant than other colours. The court also rejected the applicability of precedent relating to the registrability of colours (Board of Appeal of 21 January 2020, R 927/2019-4 and of 12 February 1998, R 7/97-3). Whilst single colours are not descriptive per se, given how they are perceived, the court held that names of colours were distinctive unless they described an inherent characteristic of the good. The court accepted with approval the cases cited by Orange, confirming that consumers would not perceive ‘orange’ as designating the colour of apparatuses, given that colour was not determinative of these goods (R 383/2021-5, BCNP Consultants GmbH v Orange Brand Services Limited (ORANGE TIE), §64 and §81 and Board of Appeal of 16 May 2023, R 2296/2022-1 GOYA GmbH v Orange Brand Services Limited (ORANYA), §53).
Similarly, the court found ORANGE distinctive in respect of the challenged services. The court held that, whilst orange is used to market the relevant services, using a colour is not the same as using the name of a colour. The court held that consumers would not perceive ‘orange’ as intrinsic to the challenged services.
The court held that the same conclusions applied to the applicant’s attack based on non-distinctiveness.
Deceptiveness and geographic indications – Articles 7(1) (g) and (j)
A theoretical possibility that a consumer will be confused is not sufficient for Article 7(1)(g) to apply (17 April 2007, R 1102/2005-4, SMARTSAUNA, § 32). A serious risk of actual deceit is required and that deceit must relate to characteristic(s) of the goods (Cambozola, EU:C:1999:115, § 41). The court did not believe that consumers would associate a small city in California with the relevant goods and services, given that there was no specific characteristic inherent to this city.
In conclusion, the court partially upheld the cancellation applications in respect of some goods in Classes 11, 16, 18 and 25. Given that Orange relied on acquired distinctiveness as a secondary ground of defence, proceedings will now be resumed on this point exclusively in respect of the limited goods in Classes 11, 16, 18 and 25.
Comment
These cases confirm the distinction between applications seeking protection for a colour and those seeking protection for the name of a colour before the EUIPO.
Whilst colours are non-distinctive per se, names of colours are only non-distinctive when colour is an inherent characteristic of the good or service. Whilst these decisions appear to limit the scope of applications for names of colours in respect of stationary, printed cards, clothing and luggage, they maintain brand owners’ scope for registration of these marks in respect of computer products, appliances and a vast array of services.
Reprinted with permission from the August 5, 2024 edition of “World Trademark Review”© 2024 Law Business Research. All rights reserved.
