This article was first published in WTR Daily, part of World Trademark Review, in the October 2024 issue. For further information, please visit www.worldtrademarkreview.com.
- Das Markenamt der Europäischen Gemeinschaften (EUIPO) stellte fest, dass die Marke SUPPORT-FIT in Klasse 25 (insbesondere Sportschuhe und Bekleidung) beschreibend und daher nicht unterscheidungskräftig sei.
- The EU Court confirmed this decision, emphasizing that it was irrelevant that the mark was invented and grammatically incorrect.
- The EUIPO had only requested a cost order against Nike in the event that a hearing would take place, which did not occur.
In its decision in Case T-1072/23 dated 23 October 2024, the Court of the European Union rejected Nike Innovate CV’s request for annulment of the decision of the EUIPO’s Fourth Board of Appeal in Case R 915/2023-4.
Background Nike is the owner of EU trademark application No. 018731327 for the word mark SUPPORT-FIT, covering “footwear; clothing; headgear” in Class 25. The examiner rejected the application under Articles 7(1)(b) and (c), in conjunction with Article 7(2) of the EU Trademark Regulation 2017/1001 for all goods except those falling under the category “headgear.” In the appeal procedure, the applicant restricted its list of goods in Class 25 to:
“Athletic footwear; sneakers; casual footwear; leggings; shorts; shirts; sweatshirts; sweatpants; tank tops; tracksuits; sports bras; socks; wristbands; athletic tights; athletic apparel; athletic uniforms; headbands; headwear; hats; caps; visors; sweatbands.”
The Board of Appeal first excluded “headbands; headwear; hats; caps; visors” from the scope of the appeal, as these fell under the broad category of “headgear” accepted by the examiner. The Board then found that the mark would be perceived as “referring to a garment that fits and supports a specific part of the body,” establishing a sufficiently direct and specific link between the mark and the relevant goods. Consequently, the relevant public (end consumers) would immediately, without further reflection, perceive it as a description of the goods or one of their characteristics. Accordingly, the mark was deemed descriptive under Article 7(1)(c) and devoid of any distinctiveness under Article 7(1)(b) of the aforementioned EU-Regulation.
Action before the Court of the European Union
Nike relied on two pleas in law – namely, infringement of Articles 7(1)(c) and 7(1)(b). Article 7(1)(c) states that trademarks consisting exclusively of signs or indications which may serve in trade to designate characteristics of the goods or services shall not be registered. According to Article 7(2), Article 7(1) also applies if the grounds for non-registrability exist in only part of the European Union. Such signs are considered incapable of serving as a source indicator for the claimed goods, provided that they are recognized by the relevant public as descriptive of one of those characteristics, and if such a characteristic is objective, inherent to the nature of the product or service, as well as intrinsic and permanent.
As the sign SUPPORT-FIT consisted of English words, the Board of Appeal had considered the English-speaking public within the European Union and found that the term “support” relates to “items worn or applied to part of the body for support,” and the term “fit” refers to “a garment that fits.” With respect to the hyphen between the two words, the relevant public would perceive the mark as referring to “a garment that fits and supports a specific part of the body.” Since the claimed goods are worn for sports and physical activity, for which a good fit offering support is a marketable characteristic, the sign was merely descriptive of the inherent and intrinsic characteristics of such goods. It also made no difference whether the sign was invented and not found in any dictionary. Similarly, the grammatically incorrect combination did not result in any fanciful surplus that would allow the public to perceive the mark as a source indicator.
Nike contested this understanding, arguing that the sign was invented and grammatically incorrect and also required some interpretation to derive meaning. Nike also alleged that the Board of Appeal had wrongly dismissed its reference to an earlier registration, which would have led to the conclusion that the applied mark was non-descriptive.
Decision
The Court of the European Union confirmed the findings of the Board of Appeal regarding the rejection of the mark under Article 7(1)(c) and dismissed Nike’s action. Therefore, the Court had no reason to address the other plea.
Interestingly, the EUIPO had only requested a cost order against Nike in the event that a hearing would take place. Since no hearing occurred, the Court ruled that each party should bear its own costs.
