JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
25 June 2020 (*)
(EU trade mark — Application for EU figurative mark OFF-WHITE — Partial rejection of the application for registration — Absolute grounds for refusal — Descriptive character — No distinctive character — Name of a colour — Article 7(1)(b) and (c) of Regulation (EU) 2017/1001)
In Case T‑133/19,
Off-White LLC, established in Springfield, Illinois (United States), represented by M. Decker, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Crawcour, J. Crespo Carrillo and H. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 14 December 2018 (Case R-580/2018-2), concerning an application for registration of the figurative sign OFF-WHITE as an EU trade mark,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, D. Gratsias (Rapporteur) and B. Berke, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 28 February 2019,
having regard to the response lodged at the Court Registry on 15 May 2019,
having regard to the change in the composition of the Chambers of the General Court,
having regard to the measure of organisation of procedure of 21 November 2019,
further to the hearing on 23 January 2020,
gives the following
Judgment
Background to the dispute
1        On 17 October 2017, the applicant, OFF-WHITE LLC, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Classes 3, 9, 14 and 20 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 3: ‘Soaps for personal use; Perfumery; Colognes; Toilet water; Perfumes; Fragrances for personal use; Skin care lotions [cosmetic]; Antiperspirants; Deodorants for personal use; Cosmetics; After shave lotions; After shave balms; Body wash; Non-medicated bath preparations; Non-medicated skin care preparations; Room fragrances; Potpourri; Aromatherapy oils; Fragranced beads for use in the home; Scented linen sprays; Scented sachets’;
–        Class 9: ‘Glasses; Sunglasses; Boxes [cases] for glasses; Cases for sunglasses; Bags adapted for laptops; Sleeves for laptops; Laptop carrying cases; Cases for mobile phones; Cell phone covers; Protective helmets; Spectacle frames; Cases and covers for tablets, PDAs (personal digital assistants) and MP3 players; hands-free kits, straps, wrist straps and neck straps for mobile telephones, smartphones, videophones, tablets, PDAs (personal digital assistants) and MP3 players’;
–        Class 14: ‘Jewelry; Lapel pins [jewellery]; Cufflinks; Watches; Wall clocks; jewelry and costume jewelry of precious metals and their alloys and coated therewith, namely rings, earrings, bracelets, brooches, pendants, charms, chains and chains for watches, necklaces, medals, medallions; precious stones, semi-precious stones; horological and chronometric instruments, watch bands, watch cases; key rings of precious metals and their alloys or coated therewith; presentation boxes for watches; jewelry cases’;
–        Class 20: ‘Pillows; Cushions; Beds; Mattresses; Furniture’.
4        By decision of 31 January 2018, the examiner partially refused the application for registration, in so far as it related to the goods in Classes 9, 14 and 20, on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
5        On 28 March 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
6        By decision of 14 December 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal as regards all the goods in Classes 9 and 20, and also as regards ‘watches; wall clocks; horological and chronometric instruments; watch bands; watch cases; presentation boxes for watches; jewelry cases’ and ‘precious stones, semi-precious stones’ in Class 14 (‘the goods in question’) (see paragraph 1 of the operative part of the contested decision), on the ground that the mark applied for was descriptive for those goods and that it lacked distinctive character.
7        In particular, the Board of Appeal, after defining the relevant public as being both the general public and professionals, held first of all that the term ‘off-white’ referred to a white colour with a grey or yellowish tinge. Next, as regards whether, for the relevant public there was a sufficiently direct and specific relationship between that word element and the goods in question, it found, in essence, that the term ‘off-white’ referred to a colour which could reasonably be perceived as a characteristic that was significant and clearly relevant for those goods. The Board of Appeal concluded that that term referred to the visual aspect of those goods and that, evidently, it would be perceived as a descriptive reference to the colour of those goods. Furthermore, it found that the figurative elements of the mark applied for, consisting of a simple, black, hexagonal shape of a label on which the term ‘off-white’ is depicted in slim, white, sloping characters, were extremely simple and purely decorative in character and not capable of distracting the public’s attention from the descriptive message conveyed by the word element.
8        Finally, the Board of Appeal held that, because of its descriptive character, the sign of which the mark applied for consists was also devoid of any distinctive character in relation to the goods in question, within the meaning of Article 7(1)(b) of Regulation 2017/1001. It added that, in view of the reasoning set out in relation to the descriptive character of that sign, it was incapable of performing the essential function of the mark, namely that of identifying the origin of the goods.
9        On the other hand, the Board of Appeal upheld the applicant’s appeal and therefore allowed registration of the mark applied for in respect of ‘jewelry; lapel pins [jewellery]; cufflinks; jewelry and costume jewelry of precious metals and their alloys and coated therewith, namely rings, earrings, bracelets, brooches, pendants, charms, chains and chains for watches, necklaces, medals, medallions; key rings of precious metals and their alloys or coated therewith’ in Class 14 (see paragraph 2 of the operative part of the contested decision). As regards those goods, the Board of Appeal found that, by their nature, they were not characterised by ‘normal’ colour names, but rather according to the colours of the metals used, for example ‘gold’, ‘silver’ or ‘rose-gold’, and that, consequently, the word element ‘off-white’ was not descriptive of those goods.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.
11      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
Subject matter of the action
12      As a preliminary point, it should be noted that, as formulated in the application, the claim for annulment appears to challenge the contested decision in its entirety, therefore, including paragraph 2 of the operative part of that decision, whereby the Board of Appeal allowed the appeal brought before it as regards the goods in Class 14 referred to in paragraph 9 above. However, at the hearing, the appellant clarified, in response to a question from the Court, that it sought annulment of the contested decision only in so far as it dismissed its action before the Board of Appeal in respect of the goods in question, as listed in paragraph 6 above, formal note of which was taken in the minutes of the hearing. Accordingly, it must be held that, by its action before the Court, the applicant seeks annulment of the contested decision in so far as it dismissed its action before the Board of Appeal in respect of those goods.
13      In support of its action, the applicant relies on two pleas in law. The first plea alleges infringement, first, of the principles of sound administration, legal certainty and equal treatment and, second, of the obligation to state reasons, in so far as the Board of Appeal did not explain why it departed from EUIPO’s previous decision-making practice. The second plea alleges infringement of Article 7(1)(b) and (c) of Regulation 2017/1001.
14      It is appropriate to examine the second plea first, alleging infringement of Article 7(1)(b) and (c) of Regulation 2017/1001.
The second plea, alleging infringement of Article 7(1)(b) and (c) of Regulation 2017/1001
15      That plea comprises two parts: the first alleges infringement of Article 7(1)(c) of Regulation 2017/1001 and the second alleges infringement of Article 7(1)(b) of that regulation.
The first part of the second plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
16      In the first part of the second plea, the applicant challenges the Board of Appeal’s finding that the mark applied for was descriptive in relation to the goods in question. In essence, it submits, first, that the Board of Appeal erred in holding that the word element ‘off-white’ would naturally be understood as referring to a light shade of colour and, second, that, even if that term were to be regarded as referring to a specific colour, it would not be descriptive of any essential characteristic of the goods in question. Finally, the applicant adds that the figurative and stylised elements added to the term ‘off-white’ confer an enhanced distinctiveness on the mark.
17      EUIPO argues, first, that there is no doubt that the term ‘off-white’ is a colour, which is not ‘pure white’, but a shade of white that may have a grey or yellowish tinge, which is wholly consistent with the definition given by both the examiner and the Board of Appeal. Second, the Board of Appeal was correct in finding that, as regards the goods in question, the colour was a factor which would be taken into account by consumers, given that the aesthetic aspect of the goods was important and thus essential for purchasers. Lastly, the graphic elements of the sign in question did not alter in any way the descriptive meaning of the mark applied for.
–       Preliminary observations
18      Under Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Pursuant to Article 7(2) of that regulation, the provisions of Article 7(1) are to apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.
19      By prohibiting the registration as trade marks of such signs and indications, Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).
20      Signs and indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation 2017/1001, regarded as incapable of performing the essential function of the trade mark, namely identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30; of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 28; and of 27 February 2015, Universal Utility International v OHIM (Greenworld), T‑106/14, not published, EU:T:2015:123, paragraph 15).
21      Additionally, as regards the absolute ground for refusal in Article 7(1)(c) of Regulation 2017/1001, a sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
22      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited; judgment of 21 January 2015, Grundig Multimedia v OHIM (GentleCare), T‑188/14, not published, EU:T:2015:34, paragraph 19).
23      It must also be recalled that, in order for EUIPO to refuse to register a trade mark under Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A word sign must therefore be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32; see, also, judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 20 and the case-law cited).
24      The applicant’s arguments regarding the Board of Appeal’s assessment set out in the contested decision must be examined in the light of those considerations.
–       The meaning of the word element ‘off-white’
25      It should be noted from the outset that the mark applied for consists of the English term ‘off-white’ depicted in slim capital letters, slightly tilted to the right, on the background of an elongated black hexagonal frame.
26      It must also be stated, which is, moreover, common ground between the parties, that, owing to the use of that English term, the relevant public to be taken into consideration is that located in the English-speaking territory of the European Union, namely, at least, the United Kingdom, Ireland and Malta, as stated in paragraph 17 of the contested decision. It is also important to note that, as is clear from paragraph 15 of that decision, the goods in question are everyday consumer goods and are intended both for the general public and for professionals, which, additionally, is not disputed by the applicant.
27      On the other hand, the applicant submits that the colour to which the term used refers, that is to say ‘off-white’, is not a determined colour. On the contrary, there can be different shades of off-white which can be made up of any colour but in a very light shade. Similarly, the term ‘off-white’ has different meanings, in particular it can relate to an amorphous, edgy and artistic concept.
28      EUIPO disputes the applicant’s arguments.
29      In that regard, it should be noted that the Board of Appeal, relying on the corresponding entry in the Oxford English Dictionary, defined the term ‘off-white’, in paragraph 19 of the contested decision, as referring to a colour very close to white, frequently having a grey or yellow tinge; almost white. In addition, in paragraph 23 of the contested decision, it stated that that term denoted a very light shade of colour, as represented in the applicant’s grounds of appeal before the Board of Appeal. In the notice of appeal, the applicant relied specifically on a table depicting four shades of off-white with a grey or yellowish tinge. It follows that the definition of the term ‘off-white’ adopted by the Board of Appeal does not differ from the view relied on by the applicant.
30      That finding cannot be called into question by another table reproduced by the applicant in its application before the Court and taken from catalogues of private undertakings. In any event, even assuming, as the applicant claims, that it is not a specific colour, defined, for example, by means of a generally recognised identification code, such a circumstance does not preclude the word element relating to it from being perceived as a shade or variant of the colour white. In those circumstances, the argument based on the alleged indeterminate nature of the colour in question must be rejected.
31      The applicant’s argument that the term ‘off-white’ has several meanings and refers, in particular, to an amorphous, edgy and artistic concept, must also be rejected. As the Board of Appeal has already noted in paragraph 21 of the contested decision, a sign must be refused registration under Article 7(1)(c) of Regulation 2017/1001, if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32, and of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 38).
32      It follows that the Board of Appeal correctly established the perception of the word element ‘off-white’ by the relevant public.
–       The link between the word element ‘off-white’ and the goods in question
33      The applicant maintains that there is not a sufficiently direct and specific link between the word element ‘off-white’ and the goods in question. It submits, inter alia, that the colour is ‘certainly’ not a characteristic of those goods and, on that basis, it reproduces a table which it submitted in its appeal before the Board of Appeal which describes the qualities and functions which, in its view, constitute ‘characteristics’ of the goods in question. In addition, first, the applicant asserts that all goods have one or more colours but that does not at all mean that the consumer will, when confronted with the sign ‘off-white’, think that the goods in question are of an off-white colour. Second, the applicant submits that a name of a colour can fall within Article 7(1)(c) of Regulation 2017/1001 only if it describes characteristics of a category of goods ‘as such’, such as orange for orange juice or green for green tea, and not merely certain items of that category.
34      EUIPO disputes the applicant’s argument by claiming that the colour of the goods in question may be regarded as being one of the ‘other characteristics’ of those goods, within the meaning of Article 7(1)(c) of Regulation 2017/1001. In that regard, it is a commonly known fact that those goods are generally acquired by consumers on the basis of their external, visual aspect, which includes, in particular, their colour, for aesthetic reasons amongst others. The contested decision contains a broad explanation as to how those goods are chosen by consumers, inter alia, on the basis of their visual impact. It cannot be denied therefore that there is a sufficiently direct and specific relationship between the term ‘off-white’, as the designation of the colour of the goods in question, and those goods.
35      In that regard, it should be borne in mind that, according to settled case-law, by using the terms ‘the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ in Article 7(1)(c) of Regulation 2017/1001, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 42 and the case-law cited).
36      It follows that the fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 43 and the case-law cited).
37      Furthermore, although it is irrelevant whether such a characteristic is commercially essential or ancillary, a characteristic, within the meaning of Article 7(1)(c) of Regulation 2017/1001, must nevertheless be objective and inherent to the nature of that product or service and intrinsic and permanent with regard to that product or service (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 44 and the case-law cited).
38      It should be noted that, in order to reach the conclusion that the word sign ‘off-white’ was descriptive in relation to the goods in question, the Board of Appeal first of all carried out an analysis of each of the goods covered by the application for registration.
39      Thus, as regards, first, the goods in Class 9, namely spectacle frames and sunglasses, their cases, and cases, bags, straps and covers for various electronic goods, it noted, in paragraph 24 of the contested decision, that it was common knowledge, having regard to existing marketing practices of those goods, that colour was a standard criterion for their designation, so that it could reasonably be perceived by consumers as a significant characteristic of those goods. According to the Board of Appeal, it is impossible to deny that off-white, given its elegant and discreet character, is clearly relevant to that type of goods and even plays an important role in consumer choice. The Board of Appeal also stated that even protective helmets might be considered to look better in off-white than in ordinary blue or grey colours.
40      Second, in paragraph 25 of the contested decision, the Board of Appeal made the same finding in respect of the goods in Class 14, namely watches, wall clocks, horological and chronometric instruments, watch bands and cases, presentation boxes for watches, jewellery cases and precious and semi-precious stones. More specifically, it found that, since those goods are undeniably fashion accessories, their colour should, from the consumer’s point of view, be consistent with the colour of a surface or with a person’s ‘look’.
41      Finally, third, in paragraph 27 of the contested decision, the Board of Appeal held that the goods in Class 20, namely pillows, cushions, beds, mattresses and furniture, were certainly chosen, apart from the characteristics indicated by the applicant, on the basis of their colour. In that connection, it noted that off-white, owing to its discreet elegance, enjoys a certain popularity in the field of interior decoration and design.
42      On the basis of those considerations, the Board of Appeal concluded, in paragraph 28 of the contested decision, that, since the word element ‘off-white’ referred to the colour off-white, it referred to the visual aspect of the goods in Classes 9, 14 and 20 and, therefore, would clearly be perceived by consumers as descriptive information of the colour of those goods.
43      In this respect, it is important to note that, in the light of the case-law referred to in paragraphs 35 and 36 above, it cannot be ruled out a priori that the colour of a product may be one of the characteristics referred to in Article 7(1)(c) of Regulation 2017/1001. However, in the present case, it must be noted that it does not follow from the considerations on which the Board of Appeal based its conclusion, as set out in paragraph 42 above, that the colour designated by the word element ‘off-white’, namely off-white, or even the shades of white which are commonly understood by the relevant public as corresponding to the colour off-white, constitute a characteristic which is objective and inherent to the nature of the goods in question, as well as being intrinsic and permanent for those goods, within the meaning of the case-law referred to in paragraph 37 above.
44      The considerations set out by the Board of Appeal as to the elegant and discreet character of the colour off-white and the improved visual impression which that colour produces in relation to certain goods, such as protective helmets, do not make it possible to establish that that colour constitutes a characteristic which is objective and inherent to the nature of the goods in question. On the other hand, those considerations, in so far as they refer to the aesthetic value and contribution of that colour, involve an element of subjective assessment, that is to say an element which, by definition, is likely to vary greatly according to the individual preferences of each consumer. However, personal assessments of individuals comprising the relevant public cannot be used to determine how a sign may be perceived by the public as a whole (see, to that effect and by analogy, judgment of 13 December 2018, Multifit v EUIPO (MULTIFIT), T‑98/18, not published, EU:T:2018:936, paragraph 31).
45      Moreover, as regards the Board of Appeal’s assessment that the word element ‘off-white’ refers to the visual aspect of the goods in question, it must be noted that, although off-white corresponds, as the applicant acknowledges, to one of the possible colour variations which those goods may have, it does not, however, constitute the sole or even predominant colour. That colour is presented only as a purely random and incidental aspect which only some of those goods may have and which does not, in any event, have any direct and immediate link with their nature. Thus, the mere fact that the goods in question are more or less usually available in off-white, among other colours, is irrelevant, since it is not ‘reasonable’, within the meaning of the case-law referred to in paragraph 36 above, to believe that for that reason alone that colour will actually be recognised by the relevant public as a description of an intrinsic characteristic which is inherent to the nature of those goods (see, to that effect, judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraphs 45 and 46).
46      It follows that by finding, on the basis of the considerations set out in paragraphs 39 to 42 above, that the word element ‘off-white’ had a sufficiently direct and concrete relationship with the goods in question, with the result that it was descriptive of those goods, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001.
47      Consequently, and without it being necessary to examine the other arguments of the parties, relating, in particular, to the figurative elements surrounding the abovementioned word element, the first part of the second plea raised by the applicant must be upheld.
The second part of the second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
48      In the second part of the second plea, the applicant contends that the Board of Appeal’s finding that the mark applied for lacks distinctive character must also be rejected, since it is based on an incorrect assessment of the descriptive character of that mark.
49      EUIPO maintains, on the contrary, that the Board of Appeal acted correctly in concluding that the mark applied for is descriptive in relation to the goods in question, which is why that mark is also devoid of distinctive character.
50      In that regard, it is important to bear in mind that each of the absolute grounds for refusal of registration listed in Article 7(1) of Regulation 2017/1001 is independent of the others and requires separate examination, even though there is an obvious degree of overlap between their respective scopes. Furthermore, those grounds for refusal must be interpreted in the light of the public interest underlying each of them (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 64 and the case-law cited).
51      It follows that the fact that a mark is not covered by one of those absolute grounds for refusal does not mean that it cannot be covered by another. In particular, it cannot therefore be concluded that a mark is not devoid of any distinctive character in relation to certain goods or services purely on the ground that it is not descriptive of them (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 65 and the case-law cited).
52      The public interest underlying Article 7(1)(b) of Regulation 2017/1001 concerns consumer protection by enabling the consumer, without any possibility of confusion, to distinguish the origin of the goods or services covered by the mark, in accordance with its essential function as an indication of origin, whereas the public interest underlying the rule set out in Article 7(1)(c) is focused on the protection of competitors against a risk of monopolisation by a single trader of indications which are descriptive of characteristics of such goods or services (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 66 and the case-law cited).
53      Accordingly, a mark which is not descriptive, as in the present case, is not, for that reason, distinctive. In such a case, consideration should also be given to whether the mark is not intrinsically devoid of any distinctive character, that is to say, it is necessary to determine whether it is capable of fulfilling the essential function of a trade mark, which is to guarantee to the consumer or end-user the origin of the goods or services covered by the mark by enabling him or her, without any possibility of confusion, to distinguish those goods or services from others which have another origin (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 67 and the case-law cited).
54      Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character must not be registered. According to settled case-law, the marks covered by that provision are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 68 and the case-law cited).
55      That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, secondly, by reference to the perception that the relevant public, which consists of the consumers of those goods or services, has of that mark (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 69 and the case-law cited).
56      In the present case, as is stated in paragraph 8 above, the Board of Appeal found, in paragraph 35 of the contested decision, that, due to its descriptive character, the sign constituting the mark applied for was also devoid of distinctive character in relation to the goods in question, within the meaning of Article 7(1)(b) of Regulation 2017/1001. In paragraph 36 of that decision, the Board of Appeal added that, in view of the reasoning set out in relation to the descriptive character of that sign, the sign in question was incapable of performing the essential function of the trade mark, namely that of identifying the origin of the goods.
57      However, it has been found, in the analysis of the first part of the second plea, that the off-white colour is not an intrinsic characteristic which is inherent to the nature of the goods in question (see paragraph 45 above).
58      Consequently, inasmuch as the Board of Appeal merely deduced that the word element ‘off-white’ did not have a character that was distinctive from its supposedly descriptive character, which has not been established, it must be held that that deduction is based on an erroneous premiss and is therefore unfounded (see, to that effect, judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 72).
59      It follows that, by holding that, as a result of its descriptive character, the mark applied for was also devoid of distinctive character in relation to the goods in question, the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001.
60      Accordingly, the second part of the second plea must also be upheld.
61      In the light of all the foregoing considerations and without there being any need to rule on the first plea raised by the applicant, the action must be upheld in its entirety and the contested decision must therefore be annulled in so far as it relates to the goods in question, as listed in paragraph 6 above.
Costs
62      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
63      Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by the applicant.
64      Moreover, the applicant has applied for EUIPO to be ordered to pay the costs which the applicant incurred before the Board of Appeal. Under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Consequently, EUIPO must also be ordered to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2018 (Case R‑580/2018-2), in so far as it refused registration as an EU trade mark of the figurative sign OFF-WHITE in respect of the goods in Classes 9 and 20 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and for ‘watches; wall clocks; horological and chronometric instruments; watch bands; watch cases; presentation boxes for watches; jewelry cases’ and ‘precious stones, semi-precious stones’ in Class 14;
2.      Orders EUIPO to bear its own costs and to pay those incurred by Off-White LLC, including the expenses necessarily incurred for the purpose of the appeal proceedings before the Board of Appeal of EUIPO.
Costeira
Gratsias
Berke
Delivered in open court in Luxembourg on 25 June 2020.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.