Judgments nº T-503/19 of Tribunal General de la Unión Europea, May 13, 2020

• Resolution Date: May 13, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-503/19

(EU trade mark - Application for the EU word mark XOXO - Absolute ground for refusal - No distinctive character - Article 7(1)(b) and (2) of Regulation (EU) 2017/1001) In Case T-503/19,

Global Brand Holdings, LLC, established in New York, New York (United States), represented by D. de Marion de Glatigny, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 11 April 2019 (Case R 1413/2018-1), concerning an application for registration of the word sign XOXO as an EU trade mark,

THE GENERAL COURT (Second Chamber),

composed of V. Tomljenović, President, P. Škvařilová-Pelzl and I. Nõmm (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 5 July 2019,

having regard to the response lodged at the Court Registry on 29 August 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 9 August 2017, the applicant, Global Brand Holdings, LLC, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the word sign XOXO.

3 The goods and services in respect of which registration was sought are in Classes 3, 9, 14, 18, 25 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 3: ‘Fragrances; body cleaning and beauty care preparations; shower gel; shaving soap; body lotion; shampoo; hair conditioner; handwash; eye gel; bath foam; body wash; body butter; shower scrub; lip balm; facial wash; hand and nail cream; soaps; perfumes; perfumery; cosmetic kits; travel kits; cosmetics; lipstick; eyeliner; mascara; nail polish; hair lotions; hair spray; dentifrices; essential oils’;

- Class 9: ‘Eyewear; sunglasses; spectacles; spectacle frames; cases, chains and retainers for sunglasses and spectacles; fascias, cases, covers, carry cases and holders for computers, mobile telephones, smartphones, tablet computers, portable digital assistants and other mobile devices; cases and holders for CDs and DVDs’;

- Class 14: ‘Precious metals and their alloys; precious stones; jewellery; imitation jewellery; costume jewellery; fashion jewellery; bracelets; brooches; chains; charms; earrings; necklaces; rings; horological and chronometric instruments; clocks; watches; watch bands; watch straps; bracelets for watches; watch and clock cases and protectors; key rings of precious metals; accessories, parts and fittings for all the aforesaid goods’;

- Class 18: ‘Leather and imitations of leather; trunks and travelling bags; bags; baggage; luggage; attaché cases; backpacks; beach bags; briefcases; document bags; handbags; hip bags; holdalls; kit bags; make-up bags; make-up cases; pouches; rucksacks; satchels; shoulder bags; sling bags; sports bags; toiletry bags; toiletry cases; purses; wallets; banknote holders; credit card holders; luggage label holders; shoulder belts; garment carriers; securing straps for articles of luggage; umbrellas; parasols; accessories, parts and fittings for all the aforesaid goods’;

- Class 25: ‘Clothing; shirts; shorts; pants; jackets; T-shirts; sweatshirts; sweatpants; hats; socks; sweaters; swimwear; jeans; dresses; skirts; blouses; vests; blazers; overalls; tank tops; footwear; underwear; baby doll pajamas; bras; camisoles; chemises; headbands; lingerie; loungewear; pajamas; panties; robes; sleepwear; headwear’;

- Class 35: ‘Retail services connected with the sale of fragrances, body cleaning and beauty care preparations, shower gel, shaving soap, body lotion, shampoo, hair conditioner, handwash, eye gel, bath foam, body wash, body butter, shower scrub, lip balm, facial wash, hand and nail cream, soaps, perfumes, perfumery, cosmetic kits, travel kits, cosmetics, lipstick, eyeliner, mascara, nail polish, hair lotions, hair spray, dentifrices, essential oils, and shampoo; Retail services connected with the sale of eyewear, sunglasses, spectacles, spectacle frames, cases, chains and retainers for sunglasses and spectacles, fascias, cases, covers, carry cases and holders for computers, mobile telephones, smartphones, tablet computers, portable digital assistants and other mobile devices, and cases and holders for CDs and DVDs; Retail services connected with the sale of precious metals and their alloys, precious stones, jewellery, imitation jewellery, costume jewellery, fashion jewellery, bracelets, brooches, chains, charms, earrings, necklaces, rings, horological and chronometric instruments, clocks, watches, watch bands, watch straps, bracelets for watches, watch and clock cases and protectors, key rings of precious metals, and accessories, parts and fittings for all the aforesaid goods; Retail services connected with the sale of leather and imitations of leather, trunks and travelling bags, bags, baggage, luggage, attache cases, backpacks, beach bags, briefcases, document bags, handbags, hip bags, holdalls, kit bags, make-up bags, make-up cases, pouches, rucksacks, satchels, shoulder bags, sling bags, sports bags, toiletry bags, toiletry cases, purses, wallets, banknote holders, credit card holders, and accessories, parts and fittings for all the aforesaid goods; Retail services connected with the sale of luggage label holders, shoulder belts, garment carriers, securing straps for articles of luggage, umbrellas, parasols, and accessories, parts and fittings for all the aforesaid goods; Retail services connected with the sale of clothing, shirts, shorts, pants, jackets, T-shirts, sweatshirts, sweatpants, hats, socks, sweaters, swimwear, jeans, dresses, skirts, blouses, vests, blazers, overalls, tank tops, footwear, underwear, baby doll pajamas, bras, camisoles, chemises, headbands, lingerie, loungewear, pajamas, panties, robes, sleepwear, and headwear’.

4 On 8 September 2017, following a request to that effect by EUIPO, the applicant amended its trade mark application by excluding ‘accessories’ from the goods covered by Classes 14 and 18.

5 The trade mark application was published in European Union Trade Marks Bulletin No 2017/180 of 21 September 2017.

6 On 29 September 2017, a third party sent to EUIPO, in accordance with Article 40(1) of Regulation No 207/2009 (now Article 45(1) of Regulation 2017/1001), written observations explaining on which grounds the mark applied for should not be registered ex officio.

7 On 16 November 2017, the examiner raised objections against the application for registration as regards the goods in Classes 3, 9, 14, 18 and 25 on account of the absolute ground for refusal in Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, and requested that the applicant submit its observations. In consequence of a request by the applicant to that effect, the time limit within which to reply was extended until 21 March 2018.

8 The applicant submitted its observations on 21 March 2018.

9 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 on the basis of Article 7(1)(b) of Regulation 2017/1001 read in conjunction with Article 7(2) of that regulation. By contrast, she allowed the mark applied for to proceed to registration in respect of the services in Class 35.

10 On 23 July 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.

11 By decision of 11 April 2019 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the applicant’s appeal.

12 As regards the definition of the relevant public, the Board of Appeal found that the goods at issue were aimed at the general public and stated that it would take into account the perception of the English-speaking public in the United Kingdom, Malta and Ireland.

13 As regards the meaning of the mark applied for, the Board of Appeal observed that the applicant did not dispute the examiner’s assessment that the sequence of letters of which the mark applied for consisted would be understood by the relevant public as meaning ‘hugs and kisses’ and that it was an expression of love and affection.

14 So far as concerns the assessment of whether the mark applied for had any distinctive character with regard to the goods at issue, the Board of Appeal, in the first place, found that the examiner had been right in finding that the mark applied for would be perceived by the relevant public as a promotional...