INTRANET
Copyright 2020 - Quorum Studio Legale e Tributario Associato - Credits

The XOXO trademark cannot be registered: the ECJ decision

European Court of Justice, Case T-503/19 of 13 May 2020

date: 31.05.2020
Area: Intellectual Property

With the judgment in question, the Court of Justice upheld a decision of the EUIPO Board of Appeal rejecting the registration of the sign ‘XOXO’ as a trademark on the grounds that it lacked a distinctive character in the meaning of Article 7(1)(b) of EU Regulation 2017/1001. In particular, the Court also found that the sign in question did not meet the requirement of distinctiveness, since it was normally perceived by the relevant public as a simple message with the meaning of “kisses and hugs”. Moreover, the goods for which registration of the mark was sought, had in common the fact that they were typically offered as gifts on various occasions, contributing to the perception of the sign as a mere message of affection.

Therefore, in agreement with the EUIPO Board of Appeal, the Court held that the sign merely reproduced an expression used to convey feelings of love and affection, without, however, including further elements capable of triggering a cognitive process in the minds of the relevant public.  This would make it impossible to distinguish products bearing the sign from products of the same kind as those of a competitor. In other words, the sign ‘XOXO’ was not considered capable of performing the typical function of a trademark, being nothing more than an ordinary statement which the average consumer would not be able to easily and instantaneously memorise as a trademark of the goods to which it relates.

The XOXO trademark cannot be registered: the ECJ decision

European Court of Justice, Case T-503/19 of 13 May 2020

date: 31.05.2020
Area: Intellectual Property

With the judgment in question, the Court of Justice upheld a decision of the EUIPO Board of Appeal rejecting the registration of the sign ‘XOXO’ as a trademark on the grounds that it lacked a distinctive character in the meaning of Article 7(1)(b) of EU Regulation 2017/1001. In particular, the Court also found that the sign in question did not meet the requirement of distinctiveness, since it was normally perceived by the relevant public as a simple message with the meaning of “kisses and hugs”. Moreover, the goods for which registration of the mark was sought, had in common the fact that they were typically offered as gifts on various occasions, contributing to the perception of the sign as a mere message of affection.

Therefore, in agreement with the EUIPO Board of Appeal, the Court held that the sign merely reproduced an expression used to convey feelings of love and affection, without, however, including further elements capable of triggering a cognitive process in the minds of the relevant public.  This would make it impossible to distinguish products bearing the sign from products of the same kind as those of a competitor. In other words, the sign ‘XOXO’ was not considered capable of performing the typical function of a trademark, being nothing more than an ordinary statement which the average consumer would not be able to easily and instantaneously memorise as a trademark of the goods to which it relates.