Fashion brand owner can’t register ‘XOXO’ TM, rules EU court
The EU General Court has blocked the apparel and brand management company behind David Beckham’s consumer products range from registering ‘XOXO’ as a trademark.
Global Brand Holdings (GBH), which manages Beckham’s Seven Global brand, wanted exclusive rights to use the mark for goods including fragrances, glasses, jewellery, leather bags, and clothes.
XOXO is a US clothing brand acquired by GBH in 2003, and licensed to apparel manufacturer Kellwood. GBH owns several US trademarks for the term, as well as off-shoot marks like ‘XOXO Luv’.
The European Union Intellectual Property Office (EUIPO) mostly rejected GBH’s application, finding that ‘XOXO’ was a “bland” and non-distinctive term meaning ‘hugs and kisses’.
The EUIPO did allow registration of the mark for retail services connected with the sale of the applied-for goods in class 35.
GBH appealed against the decision to the EU General Court, contesting the EUIPO’s findings on the distinctive character of the mark, and also arguing that it was “illogical” to allow the mark to be registered in class 35 but none of the other areas.
In its decision, the General Court found that, for a significant portion of the English-speaking public, the phrase “lacks originality or resonance”.
“Consequently, the sign ‘XOXO’ is not able to perform one of the main functions of a trademark,” the decision stated.
GBH said it had been treated unfairly because the EUIPO had disregarded the decisions to register other marks containing the term ‘xoxo’.
But the General Court said neither it, nor the EUIPO appeals board which reviewed the original refusal, could be bound by the decisions of EUIPO examiners. In particular, this would be “the Board of Appeal’s task as a review body,” the decision said.
The court also rejected the argument that the EUIPO board had “disregarded” these other marks, since it held that they were registered at a time when the term ‘XOXO’ was less common than it is now.
Finally, GBH unsuccessfully argued that the mark had acquired distinctiveness through its use of the mark.
According to the General Court, while GBH did argue during the EUIPO proceedings that it had been using the mark, it did not formally rely on acquired distinctiveness as part of its initial appeal to the EUIPO review board. There were also “several occasions” when it could have done so during the proceedings, the court found.
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