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10 June 2021TrademarksRory O'Neill

PMI wins EU trademark appeal over ‘Sienna’ vapes

Philip Morris International (PMI) has won a trademark appeal at the EU General Court over its ‘Sienna Selection’ brand of e-cigarettes and vapes.

The European Union Intellectual Property Office (EUIPO) had refused registration of the mark because it took ‘Sienna’—a “yellow” or “reddish-brown”—as forming part of a colour code signifying the strength of the products.

For the EUIPO, this meant the brand was descriptive of the goods in question, rather than acting as an indicator of their commercial origin. The office cited the common practice in the tobacco industry of using colours to indicate the strength of cigarettes or alternative smoking products.

But in a judgment issued yesterday, June 9, the General Court held that this practice generally involved colours such as “red” and “white”, with lighter colours indicating a lower nicotine content.

The use of shades of red and brown for this purpose couldn’t be regarded as a “well-known fact” to consumers, the court found. In the court’s opinion, consumers wouldn’t necessarily think that ‘Sienna’ referred to the strength of the products, especially because the brand didn’t form part of a larger colour code.

The court also ruled that the EUIPO moved too quickly from finding that the mark was descriptive to concluding that it lacked any distinctiveness at all. This finding was based on an “erroneous premise and is therefore unfounded,” the court ruled.

Last September, the court found that GlaxoSmithKline (GSK) couldn’t register a shade of purple as a trademark for inhalers, partly because it indicated the pharmaceutical strength of the products.

In that case, GSK failed to convince the court that the public would associate the inhalers with one specific shade of purple, rather than other lighter and darker shades.

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More on this story

Trademarks
9 September 2020   GlaxoSmithKline can’t register a shade of purple as a trademark covering asthma inhalers, the EU General Court has ruled.
Patents
17 May 2021   A US International Trade Commission judge has issued an initial determination on the British American Tobacco lawsuit against Philip Morris, finding that PMI’s IQOS technology infringes two BAT patents.