8 September 2023TrademarksLiz Hockley

EU court weighs in on colour ‘position’ and shape TM

Prominent German manufacturer argued that trademark was a “colour position symbol”, and that the goods covered by the mark were aimed at a specialised public | Court deemed that consumers do not usually deduce the origin of a product from the colour or shape of a package.

German manufacturer Groz-Beckert lost its bid at the EU General Court to overturn a decision nullifying a colour trademark on packaging.

The First Chamber of the court delivered its ruling on Wednesday, September 6, in favour of the EU Intellectual Property Office ( EUIPO)

The firm, which supplies products to the textile industry around the world, challenged the judgment of the EUIPO that its trademark lacked distinctive character. However, judges at the Luxembourg court found no reason to revive the mark and dismissed the suit, ordering Groz-Beckert to pay costs.

The manufacturer is one of the world's leading providers of industrial needles, precision components and fine tools as well as systems and services for the production and joining of textiles. Groz-Beckert is headquartered in Albstadt, Germany, and turned over €743 million ($795 million) in 2022.

A ‘colour position’ symbol

The company applied to register its mark back in 2020 as a “colour position symbol”, consisting of the colours white, red and green on a cuboid shape, for goods in classes 7 and 26 of the Nice Agreement.

Upon the rejection of the application, the firm appealed, but the Board of Appeal concurred with the examiner that the mark “was devoid of distinctive character”, and stated that consumers do not usually deduce the origin of a product from the colour of the packaging alone.

The geometric shape was “not so conspicuous that it conveys any message that could remain in the consumer’s memory”, the board argued.

Escalating its case to the General Court, Groz-Beckert contested that the board was wrong to deem the sign to lack distinctive character. Its arguments included that the board did not sufficiently take into account the special features of the trademark as a “colour position symbol”, and that the goods covered by the mark were aimed at a specialised public who had reason to understand the origin of the goods from the design and positioning of the three colours.

Challenges of colour marks

However, the court found no fault with the board’s determination. Noting the challenges associated with registering colour marks, the judges said that although “colours convey certain mental connections and evoke feelings, by their nature they are hardly suitable for conveying clear information”.

Despite the relevant public—textile industry professionals—having a “slightly increased” level of attention, the General Court was not convinced that Groz-Beckert’s trademark would sufficiently distinguish its goods from its competitors.

Judges also dismissed evidence the firm produced that had not been submitted to the EUIPO Board of Appeal, which included photos of packaging being sorted in warehouses according to colour design.

The photos could not be used as evidence because the General Court was aimed at reviewing the legality of the decisions of the Board of Appeal, the judges said, not evaluating evidence seen for the first time.

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