A Case Comment on OMV AG vs EUIPO

Case Name: OMV AG v European Union Intellectual Property Office (EUIPO)
Citation: Case T-38/24, General Court of the European Union, 11 June 2025.
Court: General Court of the European Union, First Chamber.
Coram/Judges: R. Mastroianni (President), T. Tóth (Rapporteur), S.L. Kalda.

Abstract

The General Court upheld EUIPO’s refusal to register OMV’s blue-and-green colour combination mark for fuel and energy related services, holding that the sign lacked inherent distinctive character u/a- 7(1)(b) EU Trademark Regulation (EUTMR). The Court treated the combination as a systematic arrangement of colours, but held that this did not relieve OMV of the ordinary burden of proving source-indicating capacity. The judgment is doctrinally important because it resists any assumption that a structured colour combination is easier to register than a single colour, yet it also exposes a thin line between legitimate scrutiny and an approach so restrictive that it collapses trade dress into near-ordinary design.

Introduction

Colour marks sit at the edge of trademark law because they ask the system to do something uncomfortable: protect a visual feature that consumers often notice before they identify. EU law accepts that colours and colour combinations can function as marks, but it subjects them to a demanding inquiry into distinctiveness and public interest, particularly where the sign is claimed abstractly and without contours. The OMV decision matters because it takes that inquiry into a commercial setting where colour coding is not ornamental in any ordinary sense but part of how service stations signal identity at a distance.

Facts

OMV sought EU protection for a sign consisting of gentian blue RAL 5010 and yellow green RAL 6018 in a systematic arrangement, covering goods and services in Classes 1, 4, 35, and 37, including fuel, lubricants, retail services, and fuel-station services. EUIPO refused protection in part on the ground that the sign lacked distinctive character. The Board of Appeal considered the colours commonly used in the fuel market, read the blue-green palette as suggestive of ecology and environmental friendliness, and found that the sign would likely be perceived as decorative rather than origin-indicating. OMV challenged the order of EUIPO relying on market studies, an expert opinion, and examples of its own use.

Issues

1. Whether systematically arranged colour combinations deserve a lower distinctiveness threshold than single colours.

2. Whether sectoral colour-use evidence can establish inherent distinctiveness?

Reasoning

The General Court held that colours and colour combinations are registrable only if they can convey precise information, especially about origin, and it repeated that a systematic arrangement does not itself make a sign distinctive. It relied on the established line from Libertel and Heidelberger Bauchemie, stressing that the general interest in keeping colours available to competitors remains relevant even for combinations. It also accepted that the Board of Appeal had considered OMV’s market studies and expert evidence, but found them insufficient because they did not show that consumers would identify the sign itself as an origin indicator for the relevant goods and services.

The Court further accepted the Board’s reliance on the idea that blue and green may evoke ecology and environmental protection. It treated this not as a pure descriptiveness finding, but as part of the broader assessment of how the relevant public would perceive the sign and whether it would convey source information. On legal certainty and equal treatment, the Court said EUIPO’s previous decisions and guidelines could not override the regulation and case law, and that each application must be examined on its own facts.

Critique

The judgment is strongest in refusing to turn a systematic arrangement into a free-standing badge of registrability. But the Court adopted an overly skeptical reading of market evidence and consumer behaviour. In sectors such as fuel retail, colours are not incidental decoration, they are part of the brand architecture through which consumers recognise stations from a distance and in motion. The Court treated the continued relevance of logos and word marks as evidence against colour-based source identification, setting an unduly demanding standard for distinctiveness.

The treatment of the “colour depletion” is equally unconvincing. While EU law resists monopolies over basic colours, the concern is weaker where the claim involves a defined palette, specific hues, and a fixed arrangement for a narrow sector. INTA rightly distinguished this difference. The Court acknowledged the distinction formally but it collapsed it in substance by finding that the combination failed to distinguish. In doing so, the Court conflates two separate inquiries: whether the sign can legally be monopolized, and whether this particular sign actually functions as a badge of origin in the relevant market.

The environmental symbolism analysis is the weakest part of the judgment. While blue and green may suggest ecology or cleanliness, symbolism is not equivalent to descriptiveness. Indian trade dress jurisprudence offers a useful contrast as courts routinely assess whether the overall get-up leaves a source impression, even if individual elements are common or descriptive in isolation. The Court adopts a more formalist approach and is less willing to recognise how repeated market exposure can make colour schemes function as source identifiers.

The judgment is also uneasy on the descriptiveness–distinctiveness divide. The Court framed the environmental associations of blue and green as relevant to consumer perception rather than descriptiveness under Article 7(1)(c) EUTMR. That reasoning lacks analytical clarity. If the colours are treated as communicating “environmentally friendly” qualities, the Court is using functional meaning to infer non-distinctiveness. A sign may suggest environmental qualities without becoming descriptive, and suggestiveness alone should not defeat distinctiveness. The result is a formally neutral standard that operates restrictively in practice.

Impact

For non-traditional marks, the decision reinforces a hard lesson. A structured colour scheme is not a shortcut around the evidentiary burden that surrounds colour marks in the EU. Applicants in visually coded sectors such as fuel and energy must show clear consumer recognition and prove that colours function as source indicators rather than decorative elements. Even precise combinations remain vulnerable where the colours are common in the sector or carry strong associative meaning.

For trade dress strategy, the case encourages applicants towards integrated branding built around colour, shape, placement, signage, and consistent use across locations. That is a sharper lesson for India as well, where litigants often overstate the independent strength of a colour scheme while under developing evidence of market association.

Conclusion

The General Court preserved doctrinal coherence, but at the cost of narrowing the practical space for colour-combination protection. OMV now stands for a restrained reading of non-traditional marks in the EU: systematic arrangement matters, yet it does not change the burden of proving that consumers read the sign as a source indicator. The deeper problem is that the judgment treats commercial branding habits as evidence of genericity more readily than as evidence of source function, and that choice will shape the future of colour marks more than the court may have intended.

References

OMV AG v European Union Intellectual Property Office (EUIPO), Case T-38/24, General Court of the European Union

Libertel Groep BV v Benelux-Merkenbureau, Case C-104/01, Judgment of the Court of Justice of the European Union, 6 May 2003.

Heidelberger Bauchemie GmbH, Case C-49/02, Judgment of the Court of Justice of the European Union, 24 June 2004.

Parle Products (P) Ltd vs J. P. & Co. Mysore 1972 AIR 1359

STATEMENT IN INTERVENTION in case T-38/24 dated 17 July 2024