KEY POINTS
A linguistic contradiction does not overcome descriptiveness if the meaning remains clear to consumers
Distinctiveness cannot be established through originality or wordplay alone
Consumer perception remains central in assessing descriptiveness
Skechers USA applied to register the word mark HOODLESS HOODIES via an International Registration covering "footwear and apparel" in class 25. The EUIPO accepted the designation in part, granting protection for footwear but refusing registration for apparel on absolute grounds. The Board of Appeal upheld the refusals under Articles 7(1)(b) and 7(1)(c) of the EU Trade Mark Regulation, finding the term to be descriptive and devoid of distinctive character in respect of clothing.
Skechers unsuccessfully appealed to the General Court (GC), arguing that the mark was inherently distinctive due to the unexpected juxtaposition of terms.
Case summary
The GC dismissed the appeal, agreeing with the EUIPO that HOODLESS HOODIES is directly descriptive of a characteristic of the relevant goods.
It considered the perception of English-speaking consumers in the EU, particularly in Ireland and Malta, and found that the average consumer would understand the term to refer to hooded garments that do not, in fact, have a hood. The use of an oxymoron, while arguably striking, was insufficient to overcome the mark's descriptive character.
"In trade mark law, style needs to be backed up by substance"
The GC held that under Article 7(1)(c), the fact that a sign may be unusual or humorous does not rescue it where its meaning remains immediately intelligible. The GC also rejected Skechers' argument that the mark possessed the minimum degree of distinctiveness required under Article 7(1)(b), noting that originality or semantic tension is not enough where the sign remains descriptive in the eyes of the public.
Legal analysis
The decision reinforces the principle that signs composed of descriptive elements will not be registrable if consumers are able to understand the descriptive message without further thought or analysis. The GC reaffirmed that the descriptiveness assessment must be based on that of the relevant public, taking into account the linguistic and conceptual meaning of the elements making up the sign.
The judgment also serves as a reminder that distinctiveness must be assessed in relation to the goods and services applied for. The approval of the mark for footwear did not assist Skechers in overcoming objections in relation to clothing.
Practice points
- Be cautious when advising on slogan or composite marks containing common descriptive elements – even if they are stylised or contradictory.
- Assess descriptiveness separately for each term applied for. Marks may be acceptable in one item but fail in another in the same class.
- Consider conducting consumer perception research where semantic ambiguity is a key argument.
- Ensure marketing creativity does not override the legal test for distinctiveness.
Conclusion
Skechers may have hoped that a clever contradiction would be enough to carry the mark over the line, but the GC was unconvinced. The decision confirms that even a memorable turn of phrase will be refused if it describes the goods in a clear and direct way. In trade mark law, style needs to be backed up by substance – otherwise, like the garment in question, the application may simply lack the necessary coverage.
Originally published by CITMA.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
