The General Court of the European Union (GC) has handed down a decision refusing registration of the word mark ‘XOXO’ on the basis that it would be perceived as merely a promotional message conveying feelings of love and affection rather than an identifier of trade origin.
In August 2017, Global Brand Holdings LLC filed a EUTM application for the word mark ‘XOXO’ in classes 3, 9, 14, 18, 25 and 35. The examiner refused the application in respect of classes 3, 9, 14, 18 and 25 on the basis that the mark lacked distinctive character. Registration of the mark was permitted for class 35.
Following an appeal by the applicant against the examiner's decision, the First Board of Appeal dismissed the appeal, holding that the mark would be perceived by the relevant public as a promotional statement informing consumers that the goods in question were offered in order to express love and affection.
The applicant then appealed to the GC arguing that the mark was used as a sign-off in informal communications to mean ‘hugs and kisses’ only by teenagers and very young women, and that the majority of the relevant public perceived it as a fanciful sign without any specific meaning. In addition, it claimed that, although the mark might convey feelings of love and affection to customers of the goods concerned, further reflection in the minds of the relevant public was necessary.
In relation to whether ‘XOXO’ is devoid of distinctive character and incapable of performing the essential function of a trade mark, namely, identifying the commercial origin of the goods and services in question, the GC did not agree with the applicant. It found that ‘XOXO’ would be understood by the relevant public as meaning ‘hugs and kisses’, as illustrated by various online dictionaries. This would not be affected by the fact that only part of the relevant public might be aware of this meaning, as long as the proportion of the relevant public concerned was not negligible. In addition, it found that, since many of the goods for which registration was sought are typically offered as gifts, this would also support the finding that the mark would be perceived as a promotional message conveying feelings of love and affection. The court also noted that the mark did not include any other elements that were capable of setting off a cognitive process in the minds of the relevant public that would make it possible to distinguish the goods covered by the mark from those of a competitor.
In its second ground of appeal, the applicant submitted that the EUIPO had allowed other marks including the term ‘xoxo’ to reach registration. However, the GC re-iterated that earlier decisions could be taken into account, but should not form the basis of a decision. As a result, it found that the Board of Appeal had not disregarded the existence of earlier decisions in reaching its own decision.
This decision highlights the difficulties of registering signs which are perceived as promotional statements to younger (and trendier!) members of the relevant public.
This article has been co-written with Georgina Wade, a trainee solicitor in the commercial, IP and IT team.