Who: Provima Warenhandels GmbH (“Provima“), Renfro Corp (“Renfro“) and the Office for Harmonisation of the Internal Market (Trade Marks and Designs (“OHIM“) Case T543/14
Where: EU General Court, Fourth Chamber
When: 26 February 2016
Law stated as at: 7 April 2016
On 20 April 2009 US-based sock manufacturer Renfro registered “HOT SOX” as a Community Trade Mark (now called a “European Union Trade Mark” courtesy of the recently signed-off EU Trade Mark Regulation 2015/2424). The goods covered by the registration are ‘hosiery’ only.
Provima, which amongst other products makes socks that can be heated up in a microwave oven, challenged the validity of the ‘HOT SOX’ mark (the “Mark”) on two grounds: firstly that it was descriptive of the goods and secondly that it was devoid of distinctive character.
OHIM (now called the European Union Intellectual Property Office thanks to the above mentioned EU Trade Mark Regulation) held that the Mark was valid as Provima had failed to make its case on either of these grounds. Provima then appealed. In dismissing the appeal the Board of Appeal (“BoA“) found, among other things, that:
“even if the element of ‘sox’ were understood by the consumer as being a misspelling of the word ‘socks’, the word ‘hot’ was unnatural and was undesirable when it was used for socks…consequently, the contested mark, interpreted as ‘high temperature socks’ is not descriptive or devoid of distinctive character for the goods at issue”.
Provima then appealed to the EU General Court (“EGC“) asking for a declaration of invalidity.
EU General Court’s Decision
The EGC agreed with the BoA and upheld the validity of the Mark.
Under article 7(1)(c) of Council Regulation (EC) 207/2009, trade marks which consist exclusively of signs or indications which designate the kind, quality, quantity or intended purpose of goods or services should not be registered. For a sign to fall foul of 7(1)(c), case law states that there must be a sufficient, direct and specific relationship between the sign and the goods to enable the public to immediately perceive a description of the goods in question.
The EGC firstly considered whether ‘sox’ was descriptive. The EGC found ‘sox’ as opposed to ‘socks’ did not make the mark less descriptive as phonetically socks and sox are identical. However, they noted that ‘sox’ in this case was never used as a mark in isolation. The EGC reiterated that the descriptive character of the mark as a whole must be considered.
Secondly, the EGC looked at the meaning of ‘hot’, as in high temperature, used in conjunction with ‘sox’. It distinguished between warm and hot – warm socks would be descriptive. However the ECG agreed with the BoA that ‘hot’ in this context was not descriptive as it was not a natural description, stating “no consumer would wish to have socks which caused hot feet.”
Thirdly, the EGC considered the alternative meanings of the word hot. The BoA had found that hot had too many definitions to give the word socks a clearly definable meaning. The BoA considered that the interpretation of the word ‘hot’ as being ‘fashionable’ was one of the least recognised interpretations of hot. On this basis, it did not go on to consider whether hot meaning ‘fashionable’ was descriptive. The EGC differed from the BoA on this point as it said that even if only one of the possible meanings of the word is descriptive of the goods this is sufficient for the mark to be found invalid. Thus it was necessary to consider if any of the meanings of hot were descriptive. However, it then went on to find that the other meanings of hot, namely ‘fashionable’ and ‘erotic/sexy’ were not descriptive of the goods, asserting that a pair of socks ‘is not generally perceived as being sexually provocative’.
As to the second ground Provima relied on, which was that the Mark was devoid of distinctive character, the EGC upheld the BoA’s assessment that the Mark was distinctive as ‘hot’ does not normally describe socks and the incorrect spelling of socks would attract the attention of consumers. Hot and ‘sox’ together formed a sufficiently original whole, the EGC held, to give the Mark minimal distinctive character, thus invalidating this ground of refusal.
Why this matters:
This decision is a useful guide to brand owners to help them assess the threshold for inherent distinctive character of a mark. One particular take-away is that where a mark has more than one possible meaning, if just one of these is held to be descriptive of the goods or services covered by the registration, it will be held invalid.