What is a hoodless hoodie? At least not registerable as a trade mark

In a series of decisions, the General Court recently confirmed the rejection of several trade mark applications from Skechers concerning the slogans JUST SLIP IN, JUST STEP IN, STEP IN AND GO, GO HANDS FREE and HANDS FREE FIT, all for footwear. The most notable of these decisions concerns the rejection of the trade mark HOODLESS HOODIES (case T-206/24).

Background

In 2021, Skechers designated the EU in its international registration for the word sign HOODLESS HOODIES for ‘footwear and apparel’.

The examiner at the European Union Intellectual Property Office (‘EUIPO’) rejected the application with respect to ‘apparel’ because it lacked distinctiveness and was descriptive (Art. 7(1)(b) and (c) EUTMR).

The EUIPO’s Board of Appeal (‘BoA’) dismissed Skechers’ appeal. Skechers filed an action with the General Court.

The General Court’s decision

The General Court dismissed the action on the ground that the sign ‘HOODLESS HOODIES’ was descriptive under Art. 7(1)(c) EUTMR.

The judges confirmed that the relevant public consisted of the general public at least in the English-speaking Member States Ireland and Malta. The consumers had an average level of attention.

The Court also endorsed the BoA’s analysis of the mark. In complex trade marks, each individual element may be assessed for its descriptiveness separately as long as this is also done for the entire sign.

Further, although consumers normally perceive a mark as a whole and do not analyse its various details, they will break it down into word elements which have a specific meaning or which resemble known words.

On that basis, the relevant public would understand that ‘hood’ means a loose head covering either attached to a cloak or coat or made as a separate garment. The word ‘less’ is a suffix indicating that someone or something does not have the thing that the noun refers to. ‘Hoodies’ is the plural of ‘hoodie’ which is a casual jacket or sweater with a hood. Overall, the sign would be understood as meaning ‘hoodies without a hood’.

The judges found that the mark conveys a descriptive message about the characteristics of apparel. The element ‘hoodies’ provides information on the type of garment. The word ‘hoodless’ conveys information on a characteristic inherent to the product, namely the fact that it has no hood. Consumers would understand the sign as referring to sweaters or sweatshirts which are items of apparel. Therefore, a direct link between the meaning of the sign and the goods in question exists.

Skechers argued that the mark contains a contradiction on account of the juxtaposition of two contradictory concepts. The sign constitutes an unusual combination of words giving the sign a fanciful and original character. The Court responded that the sign consists of two English words which comply with the rules of English syntax. Further, the fact that the sign is an oxymoron does not preclude the conclusion that it has a descriptive meaning, namely referring to sweaters or sweatshirts. In addition, it is sufficient if at least one of the possible meanings is descriptive.

Comment

At first glance, the decision seems at odds with the Audi v OHIM judgment of the Court of Justice of the EU (‘CJEU’) concerning the trade mark ‘Vorsprung durch Technik’ (‘advantage through technology’). The CJEU held that a trade mark with certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public can have the minimum degree of distinctiveness. Could one not argue that the semantic contradiction, the alliteration and the structure of the sign make it at least somewhat original, resonant and that understanding the mark requires some interpretative effort?

Well, the General Court did not deal with the distinctive character but with the question of descriptiveness. What applies to the assessment of the distinctive character of a mark does not necessarily also apply to the determination of its descriptive character. The decisive question for Art. 7(1)(c) EUTMR is whether the link between the sign’s meaning and the goods/services is sufficiently immediate for the relevant public to perceive the sign as descriptive. If the Audi v OHIM criteria are met, can one not argue that there is no direct link between the sign and goods/services?

Be that as it may, applicants should not rely too much on the Audi v OHIM judgment. It can be deemed to be an outlier because of its specific facts, which the General Court summarized in Groschopp v EUIPO (Sustainability through Quality). In particular, the CJEU considered in the assessment of the inherent distinctiveness that ‘Vorsprung durch Technik’ was a widely known slogan having been used by Audi for many years, which made it easier for the relevant public to identify the commercial origin of the goods. This will hardly be the case for most slogans (and should not be taken into account anyway because the actual use may only be considered when asserting distinctiveness acquired through use under Art. 7(3) EUTMR). 

 

It is also interesting to see that the EUIPO accepted the trade mark ‘HOODLESS HOODIES’ for ‘footwear’. If, as the General Court found, the sign conveys the message that the goods are sweaters, would the mark not be considered deceptive and fall foul of Art. 7(1)(g) EUTMR because sweaters are not footwear?

The picture is by 琦 刘 and used under the licensing terms of pexels.com.