No hugs or kisses from the General Court

The General Court has dismissed an action brought by Global Brand Holdings, LLC (Global Brand), against the European Union Intellectual Property Office (EUIPO). The action concerned the EUIPO's refusal to register an EU trade mark (EUTM) for "XOXO" on grounds that it lacked distinctive character.

Background

In August 2017, Global Brand filed an application with the EUIPO for the registration of "XOXO", as an EUTM, in various classes. Following publication, an EUIPO examiner raised objections to the registration under Article 7(1)(b) of Regulation (EU) 2017/1001 (the Regulation), in all but one class. As readers may be aware, Article 7(1)(b) provides an absolute ground for refusal of registration, where a trade mark is devoid of any distinctive character.

Global Brand appealed to the Boards of Appeal (BoA) but in April 2019, the appeal was dismissed on grounds that "XOXO" would be perceived by the relevant public as "a promotional statement... offered to express love and affection". The BoA also found that "XOXO" lacked inherent distinctive character as many of the goods listed in Global Brand's specification were offered as gifts. As such, consumers would perceive "XOXO" not as an indication of origin but as "a banal and merely promotional indication about feelings that those goods convey, namely love and affection".

General Court

Global Brand appealed the BoA's decision to the General Court (GC) on three grounds:

1. Alleged infringement of Article 7(1)(b) of the Regulation
   
   

   Ground 1: only "teenagers and very young women" use "XOXO" to mean "hugs and kisses". Such people only represent a small part of the relevant public and, therefore, "XOXO" has intrinsic distinctive value amongst the majority.

   GC response: Dismissed - teenagers and very young women constitute a "non-negligible part" of the relevant public. In any case, the wider public attributes "hugs and kisses" to the sign "XOXO" and it is generally used to express love and affection. The "XOXO" sign also does not include elements indicating commercial origin, or which enable consumers to distinguish goods as those of Global Brand. It is therefore unable to perform one of the main functions of a trade mark (i.e. enabling the public to identify Global Brand as the source of goods that bear the "XOXO" mark).
   
   

2. Alleged infringement of equal treatment principles and sound administration

   
   Ground 2: the BoA disregarded previous EUIPO decisions, which allowed registrations including "XOXO". 

   GC response: Dismissed - the legality of decisions must be assessed "solely" on the basis of the Regulation. Although earlier decisions regarding similar applications could be considered, the BoA was not bound by them.
   
   

3. Alleged infringement of Article 7(3) of the Regulation
   
   Ground 3: "XOXO" had acquired distinctive character through use and was therefore registrable. 
   
   GC response: Dismissed – the purpose of the GC was to assess the legality of the BoA's decisions, not to review new evidence of fact that was presented for the first time. Global Brand had not previously put forward a case under Article 7(3) of the Regulation and was not at liberty to do so now.

Comment

The decision illustrates the difficulty of attempting to register signs, which inherently lack distinctive character, as trade marks. It also reinforces the position that whilst trade mark law is harmonised across the EU, the EUTM regime works autonomously and is independent of national systems. Here, the GC made clear that third-party registrations for "XOXO" (and variants of it), which had been registered in various EU member states were irrelevant, for the purposes of the EUIPO, BoA and GC's decision-making processes.

Although Global Brand's acquired distinctiveness argument was not considered (due to the timing of its submission), demonstrating acquired distinctiveness through use can be a tricky and onerous process – this was highlighted in the long running saga regarding Nestlé's four finger Kit Kat EUTM shape. When brands are conceived, it therefore remains desirable to use distinctive words, fonts and images, to increase the distinctiveness of signs that would otherwise be potentially lacking. Where that is not possible or where simply a word mark is preferred, businesses should keep contemporaneous records, showing the evolution of their marks and their recognition by the public.

XOXO.