'XOXO' word mark cannot be registered as a trade mark, says EU General Court

XOXO - what does one first think of when they see/hear the expression? Some may equate it with hugs and kisses, others may immediately think to follow it up with “…Gossip Girl” [*slowly raises hand*], some may recall the US fashion brand, and those who have been stuck on the video streaming services for perhaps a bit too long may come up with the Netflix original film of the same name [not this Kat though - Google brought it up, I swear]. Regardless of its repertoire of potential associations, marks including and consisting solely of ‘xoxo’ have been registered as trade marks in various countries. However, in T-503/19, Global Brand Holdings LLC - the company behind US brand ‘XOXO’ - found themselves once again unable to register it at the EU level, due to the mark being found devoid of distinctive character.

No 'XOXO' for Global Brand Holdings,
but plenty for this Kat :)

Background

In August 2017, Global Brands Holdings submitted an application to the EU Intellectual Property Office (EUIPO) seeking registration of the word mark ‘XOXO’ for goods and services under the following Nice classes:

• Class 3, including fragrances, body lotion and bath foam;

• Class 9, including eyewear, sunglasses, and spectacles;

• Class 14, including precious metals and their alloys, jewellery and watches;

• Class 18, including leather products, bags and luggage;

• Class 25, including clothing, shirts, and shorts; and

• Class 35, including retail services connected with the sale of fragrances, eyewear, etc.

Initial objections were raised to the registration of the goods under classes 3, 9, 14, 18 and 25 (but not to the registration of the mark for class 35 services) on the basis of Article 7(1)(b) of Regulation 2017/1001 (the EU Trade Mark Regulation, or EUTMR). The First Board of Appeal (BoA) went on to dismiss the applicant’s appeal (going further so as to deny registration of the mark for class 35 services), also finding the mark devoid of distinctive character.

The applicant submitted 3 pleas in law to the General Court (GC) relating to breach of: (1) Article 7(1)(b) EUTMR; (2) principles of equal treatment and sound administration; and (3) Article 7(3) EUTMR [this point mainly concerned the manner in which evidence submitted by the applicant, and shall not be addressed here].

Article 7(1)(b) EUTMR

As readers know, marks devoid of distinctive character are marks are incapable of performing the essential function of a trade mark, namely, identifying the commercial origin of the goods and services in question. Distinctiveness is assessed by reference to the goods and services for which registration is sought, as well as the relevant public’s perception of the sign.

Concurring with the BoA’s earlier decision, the General Court (GC) stated that the BoA had been entitled to base its assessment on the relevant public in countries where English is an official language (the UK, Malta and Ireland) and that a finding that that absolute ground is applicable in just part of the EU would be enough for the mark to be refused registration. On the basis of this relevant public, the GC highlighted that ‘XOXO’ would be understood by the relevant public as meaning ‘hugs and kisses’, as shown in particular by various online dictionaries. This would not be affected by the fact that only part of the public may consider this meaning, as long as such part is non-negligible. 

Since many of the goods for which registration was sought are typically offered as gifts, this would also support the finding that mark would be perceived as a promotional message conveying feelings of love and affection. Whilst this would not necessarily prevent the mark from being registered, the mark would still have to be able to indicate commercial origin and enable consumers to distinguish the goods covered by the mark from those of competitors. No further elements of the mark would allow for such a distinction to be made, and the mark would be viewed by a non-negligible part of the public as an advertising message lacking distinctiveness. 

Infringement of principles of equal treatment and sound administration

In its second plea, the applicant submitted that the BoA had disregarded the EUIPO’s earlier decisions, which had allowed for the registration of EU trade marks including the term ‘xoxo’. It was also claimed that the term ‘xoxo’ had the same level of repute as it did when it was registered as part of an earlier EU trade mark, since it had inter alia been popularised by an American series for teenagers [*cough cough Gossip Girl*] prior to the registration of the mark. It also claimed that other EU and national trade marks had recently been registered containing the term ‘xoxo’.

The GC responded by restating that the legality of earlier BoA decisions was to be assessed solely on the basis of the Regulation, not on the previous decision-making practice of those Boards of Appeal. Earlier decisions taken in respect of similar applications could be considered when deciding if the same outcome should be reached. However, this would have to remain consistent with the principle of legality. The GC found that the BoA had not disregarded the existence of earlier decisions - they had been addressed in its statements that the earlier decisions could have been incorrectly adopted, and could have possibly granted when the term ‘xoxo’ did not have the same level of repute.

The GC also took the opportunity to reiterate that the EU trade mark regime is as an autonomous legal system which pursues objectives peculiar to national systems, whilst also being independent of them. Assessment is thus to be based on EU rules. As a result, the EUIPO and, if appropriate, the EU judicature, would not be bound by a decision given in a Member state or a third country that the sign in question is registrable as a national trade mark.

Comment

If you wanted a restatement of the independence of the EU trade mark system, you need look no further. It once again illustrates the difficulty faced by companies attempting to promulgate their brand worldwide - there is no guarantee that a  mark eligible for trade mark protection in some territories will be granted such protection in others.