Background
In 2018, Philip Morris Products SA applied to the European Union Intellectual Property Office (EUIPO) for registration of the sign "SIENNA SELECTION" as a word mark for goods in Class 34 (including tobacco, tobacco products, tobacco substitutes, cigarettes and so-called vaporizers). Registration was refused in 2019 on the grounds that the sign was merely descriptive with regard to the intensity and flavor of the (tobacco) goods covered, as "Siena" denoted a yellow to reddish-brown color pigment and, as a result, the name lacked distinctiveness for the goods at issue. The Board of Appeal also confirmed this view, against which Philip Morris finally brought an action before the General Court of the European Union (GC).
Judgment of the GC (June 9, 2021, T-130/20)
The GC did not follow the reasoning of the Cancellation Division and the Board of Appeal of the EUIPO. Rather, the court found that the sign SIENNA SELECTION, without taking into account any further information, did not allow any conclusion to be drawn as to the intensity or taste of the goods and was therefore not descriptive in itself.
With regard to the assessment framework, the GC clarified that the descriptive character of a sign cannot be determined in isolation from the goods concerned and not without taking into account the relevant public’s understanding in each case. Furthermore, in order to determine the inability to protect, a sufficiently direct and specific connection between the sign and the protected goods is required, so that the relevant public immediately and without further reflection perceives the sign as descriptive.
In the view of the GC, this is not the case with SIENNA COLLECTION in relation to tobacco products. While the word element SELECTION indisputably designates either the selection process or the selection as such and thus a quality indicator, the meaning of the word element SIENNA was disputed before the court. The plaintiff argued that the term SIENNA had various meanings, of which the color designation was only one, which, moreover, was by no means obvious. In this regard, the court held that it was sufficient if, among several possible interpretations of the sign, only one was descriptive. The reputation of the designation as a color indication is not relevant here.
The court further stated that it is undisputed that indications of the taste of goods are also exempt from the ground for refusal of descriptiveness under Article 7(1)(c) of Regulation (EU) 2017/1001. The Court also followed the Board of Appeal's view that the use of color codes was a common practice in the tobacco industry. Red and darker shades would be associated with
fuller flavor and more intense nicotine content, while lighter colors would be associated with lower nicotine content and lighter flavor.
Even on the basis of this practice, however, the court did not consider the designation SIENNA to be descriptive. In the court's view, the colors red and white directly indicate the taste and intensity of tobacco products. However, it did not follow from this that other, possibly less common, color designations would automatically be understood as descriptive in the same way.
The court also disagreed with the EUIPO's argument that color intensity automatically contains a general statement about taste and intensity. While the name of a color used to designate the nicotine flavor or content of a product range could be descriptive if "the context is already known to the relevant public," it was incorrect to characterize as descriptive "an original name which [may] be similar to a color which is not in common use in the relevant industry and which therefore requires guidance and instruction from the specific competitor as to the particular meaning to be attributed to it."
In this regard, SIENNA SELECTION lacked necessary additional information for the consumer to be able to classify this relative statement. "Indeed, the average consumer would have to know the entire 'color code' applicable to a range of goods such as those at issue in the present case in order to be able to draw conclusions, if necessary, as to the specific characteristics of the goods marked 'Sienna' in terms of taste or nicotine content [...]."
On balance, the GC found that it must therefore be assumed that the relevant public in the present case will not immediately and without further reflection perceive the degree of intensity of the taste or aroma of the goods in question or their nicotine content merely because the mark contains the word element SIENNA.
Comment
With this judgment, the GC concretizes the standard for assessing the protectability of color designations under European trademark law. In cases in which the color designation obviously does not designate the color of the goods themselves, but could at best describe other properties of the goods, a refusal of protection can only be considered if it is possible to draw conclusions about such properties of the goods from the color designation directly or with the aid of a color code established with the target public. As indicated in the proceedings, any connection between color and product, no matter how slight, would otherwise lead to a refusal without taking into account the public's understanding. Notably, a crucial factor in the assessment of protectability for such trademarks is to be seen within the public's understanding – which has to be evaluated on a case-by-case basis.
Authored by Thorsten Klinger
