Background of the case

In August 2017, the applicant, Global Brand Holdings LLC, filed an application of an EUTM XOXO (word mark) for the following classes 3, 9, 14, 18, 25 and 35. On May 2018, the application was rejected, following the objections raised by the Office since the trademark was considered not distinctive and having a mere promotional and laudatory meaning. It was only allowed to proceed only in Class 35.
Subsequently, the applicant filed an Appeal, which was eventually dismissed in its entirety. The Board found the mark would be perceived as a promotional statement the function of which was to inform consumers that those goods were offered in order to express love and affection. Concerning the goods, the view of the Office was that those 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, namely love and affection.

Decision of the General Court

The General Court, having assessed the provided evidence, sates that the sign XOXO will be understood by the relevant public as meaning “hugs and kisses” and disregards the point of the applicant, claiming that only part of the public (young women and teenagers), will refer it as such.

When it comes to the assessment of the goods, this Court also maintains the Appeal ´s criteria and confirms that the rejected goods are capable of being offered as gifts, and therefore will be perceived as a promotional message conveying feelings of love and affection.

Therefore, the term ‘xoxo’ is considered as an advertising message that lacks originality or resonance and is therefore an ordinary statement. The term 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 at issue 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.

As a last ground, the applicant claims a breach of equal treatment, legal certainty and sound administration in so far astrademarks containing the term XOXO were granted for registration in the past. The Court highlights that the subject case was assessed following the legal provisions and relevant case law, and that the semantic meaning has evolved, not having the same level of repute as it currently has.

Therefore, since the applicant failed to prove acquired distinctiveness through the course of proceedings, and having the Court disregarded all the pleas, the trademark application is rejected for all the aforementioned goods.

Judgment of the General Court (Second Chamber) of 13 May 2020 in Case T‑503/19