13 July 2020

Brands update - July 2020 – 8 of 9 Insights

The General Court looks at distinctiveness of the XOXO mark


In August 2017, Global Brand Holdings, LLC (the Applicant) filed an EU trade mark application for the word mark XOXO covering goods in classes 3, 9, 14, 18, 25 and retail services for those goods in Class 35.

The examiner objected to the application in respect of the goods in classes 3, 9, 14, 18 and 25 on the basis of lack of distinctive character. She allowed the mark to proceed to registration in respect of the services in class 35.

The Applicant appealed against the examiner's decision. The First Board of Appeal dismissed the Applicant's appeal, confirming that the mark would be perceived by the relevant public as a promotional statement, with the function of informing consumers that those goods were offered in order to express love and affection. The Applicant then appealed to the General Court.

The Applicant argued that the sign was used as a sign-off in informal communication to mean "hugs and kisses" only by teenagers and very young women – who represented only part of the relevant public – and that it was perceived by the majority of the relevant public as a fanciful sign without any specific meaning. The Applicant also claimed that many registered trade marks conveyed a feeling, and argued that – although the mark may convey the feelings of love and affection to the persons who buy and offer the goods concerned – further reflection in the minds of the relevant public was necessary.

The General Court noted that, according to settled case law, non-distinctive marks are incapable of performing the essential function of a trade mark (ie identifying the commercial origin of the goods or services at issue). The distinctive character of a sign must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the relevant public's perception of the sign.

Furthermore, a trade mark consisting of an advertising slogan must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned.

The General Court confirmed that the relevant public in this case was the general public. The Court also noted that the Board of Appeal was entitled to rely on the perception of the general public in the countries in which English is an official language. 

Regarding the distinctive character of the sign, the Court stated that it was clear from the evidence that the sign XOXO would be understood by the relevant public as meaning "hugs and kisses". It would therefore be perceived – in relation to goods that are capable of being offered as gifts – as a promotional message conveying feelings of love and affection. 

In addition, the Court noted that the sign did not include any other elements that were capable of setting off a cognitive process in the minds of the relevant public, making it possible to distinguish the goods covered by the mark from those of a competitor. 

Ultimately, the Court concluded that the sign XOXO is unable to identify the goods of a particular undertaking, and confirmed that the sign has no distinctive character as a result.

Case reference: T-503-19

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