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When Love And Affection Cannot Be Trademarked

By its judgment T-503/19, the General Court found the mark “XOXO” would merely be perceived as promotional message conveying feelings of love and affection meaning “hugs and kisses”. The Court upheld the EUIPO Boards’ decision and its application of article 7.1 b) EUTMR.

Following a third party’s written observations requesting that the trade mark should not be registered ex officio, the EUIPO raised objections against the application for registration on account of the absolute ground for refusal in Article 7(1)(b) of Regulation 2017/1001 (lack of distinctive character).

By decision of 24 May 2018, the Examiner refused to register the mark applied for in respect of the goods in classes 3, 9, 14, 18 and 25 (perfumes, glasses, jewels and watches, bags and accessories and clothing) and allowed the mark applied for to proceed to registration in respect of the services in Class 35 (advertising services; business management; office functions).

Following the applicants’ appeal, the Board of Appeal found that the goods in classes 3, 9, 14, 18 and 25 were typically offered as gifts and that, in that context, consumers would not perceive the sign associated with those goods as an indication of origin, but as a banal and merely promotional indication about feelings that those goods convey, that is, love and affection.

The applicant did not dispute that the mark “XOXO” might have that meaning, but submitted that that is true only for part of the relevant public, namely teenagers and very young women (we wonder whether this claim has something to do with the popular series “Gossip girl”) , and not for the rest of the relevant public.

The General Court indicated that even if a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods, the word sign merely reproduces the term “XOXO” as it is used by the relevant public to convey feelings of love and affection (hugs and kisses), but does not include any other elements that are capable of setting off a cognitive process in the minds of the relevant public and that make it possible to distinguish the goods covered by the mark applied for from those of a competitor.

The Court further stated that the term “XOXO” is, rather, an advertising message that lacks originality or resonance and is therefore an ordinary statement. “XOXO” does not, in addition, require any interpretative effort by that part of the relevant public, with the result that it can be held that the sign does not include any elements that might, beyond its promotional meaning, enable the average consumer concerned to memorise it easily and instantly as a trade mark for the goods covered of a particular undertaking.

The Court also rejected the applicant’s argument that the goods at issue may be purchased for a purpose other than that of being offered as gifts and considered the claim irrelevant.

It follows that the Court has considered that mark does not have any particular originality or salience; nor does it require a minimum interpretative effort or trigger any particular cognitive process on the part of the  relevant  public;  rather,  it  is  merely  an  ordinary  advertising  slogan  making  the  point  that  the goods covered by the mark “express” feelings of affection and love

It is indisputable that “XOXO” will be understood by the English-speaking part of the public as “Hugs and Kisses” and that as consequence, goods offered under that sign may convey love and affection.

However, we must not forget that the circumstance that the applied for mark is a common expression cannot automatically lead to the conclusion that the sign itself would be devoid of distinctive character as well as the fact that verbal elements are non-distinctive only if they are so frequently used that they have lost any capacity to distinguish goods and services. Thus, could it be said that the Court has been too strict in this case?

In any case, what it is certain is that the Court has not provided much love and affection to the applicant.

To access the decision in full, please click here: http://curia.europa.eu/juris/document/document.jsf?text=&docid=226452&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=10400131

Author: Isabela Robledo McClymont, Lawyer

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