7 April 2025 (*)

( EU trade mark – International registration designating the European Union – Word mark HOODLESS HOODIES – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EU) 2017/1001 – Equal treatment – Principle of good administration – Articles 20 and 41 of the Charter of Fundamental Rights – Action manifestly lacking any foundation in law )

In Case T‑206/24,

established in Manhattan Beach, California (United States), represented by J. Bogatz, Y. Stone and J. Feigl, lawyers,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by T. Frydendahl, acting as Agent,

defendant,

THE GENERAL COURT (Second Chamber),

composed of A. Marcoulli, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,

Registrar: V. Di Bucci,

makes the following

By its action under Article 263 TFEU, the applicant, Skechers USA, Inc. II, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 February 2024 (Case R 1799/2023-2) (‘the contested decision’).

Background to the dispute

On 14 October 2021, the applicant filed with EUIPO an application for international registration designating the European Union for the word sign HOODLESS HOODIES, pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

The mark applied for covered goods in Class 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Footwear and apparel’.

By decision of 26 June 2023, on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, the examiner partially refused the application for registration of the mark applied for in so far as it covered ‘apparel’.

On 24 August 2023, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.

By the contested decision, the Board of Appeal dismissed the appeal on the ground that the trade mark applied for was descriptive of ‘apparel’ for the purposes of Article 7(1)(c) of Regulation 2017/1001. In essence, it found that the sign applied for described, from the point of view of the English-speaking public, the kind of apparel and one of the characteristics of that apparel for which protection was sought, in essence, hoodies without a hood, and that there was a sufficiently close link between that sign and those goods.

Forms of order sought

The applicant claims that the Court should:

–annul the contested decision;

–order EUIPO to pay the costs.

EUIPO contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs in the event that a hearing is convened.

Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.

In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give a decision without taking any further steps in the proceedings, notwithstanding that one of the parties has requested a hearing (order of 6 October 2015, GEA Group v OHIM (engineering for a better world), T‑545/14, EU:T:2015:789, paragraph 13).

The applicant relies on three pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001, secondly, breach of the principle of equal treatment, as enshrined in Article 20 of the Charter of Fundamental Rights of the European Union (‘the Charter’), read in conjunction with Article 41 of the Charter, and, thirdly, breach of the principle of good administration, as enshrined in Article 41(1) and (2) of the Charter.

The first plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001

The applicant submits, in essence, that the Board of Appeal made an incorrect assessment of the descriptive character of the mark applied for.

EUIPO disputes the applicant’s arguments.

Under Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, are not to be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).

In order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).

A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).

It is in the light of those considerations that the Court must examine whether, as the applicant submits in the context of the present plea, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 by analysing, first, the arguments relating to the relevant public and territory, next, those relating to the meaning of the sign applied for and, lastly, those disputing the descriptiveness of the mark applied for in relation to the goods at issue, namely ‘apparel’ in Class 25.

The relevant public and territory

In paragraph 29 of the contested decision, the Board of Appeal found, as regards the goods at issue, that the relevant public was the general public, whose level of attention is average. Furthermore, in paragraph 30 of the contested decision, the Board of Appeal stated that, as the sign applied for was made up of English words, the absolute ground for refusal had to be assessed by reference not only to the English-speaking public of the European Union, namely that of Ireland and Malta, but also by reference to the public of countries in which the general public is known to have a knowledge of basic English, such as Denmark, Cyprus, the Netherlands, Finland and Sweden.

The applicant submits that the Board of Appeal erred in that assessment in so far as the public targeted by the goods at issue, namely the general public in the European Union, has only a very basic knowledge, if any, of the English language, outside the States where the official language is English. In those circumstances, the applicant submits that the assessment that the mark applied for is descriptive in character can be made only by reference to the general public of Ireland and Malta, since the Board of Appeal did not provide evidence that the expression ‘hoodless hoodies’ was composed of basic English terms which would therefore be understood by the public in EU Member States where English is not the official language.

EUIPO disputes the applicant’s arguments.

In the present case, as the applicant does not dispute the Board of Appeal’s assessment that the relevant public is the general public with an average level of attention, it should not be called into question.

As regards the applicant’s arguments disputing that the public of Member States other than Ireland and Malta was taken into account, it need only be recalled that, in accordance with Article 7(2) of Regulation 2017/1001, it is sufficient that an absolute ground obtains in part of the European Union for a mark to be refused registration (judgment of 5 June 2019, EBM Technologies v EUIPO (MobiPACS), T‑272/18, not published, EU:T:2019:373, paragraph 17).

In those circumstances, the applicant’s arguments relating to the definition of the relevant public must be rejected as ineffective, since the Board of Appeal was right to find that the relevant public in the present case consisted, inter alia, of the general public in the territories of Ireland and Malta.

The meaning of the sign applied for

The Board of Appeal endorsed the examiner’s assessments relating to the meaning of the sign applied for and set out in paragraph 31 of the contested decision. In particular, it approved the following definitions used by the examiner, namely, first, that the word ‘hood’ means a loose head covering either attached to a cloak or coat, or made as a separate garment, secondly, that the word ‘less’ is a suffix which is added to English nouns in order to form adjectives that indicate that someone or something does not have the thing that the noun refers to and, thirdly, that the word ‘hoodies’ is the plural of ‘hoodie’ which is a casual jacket, or sweater, with a hood. Accordingly, the Board of Appeal found that the sign applied for would be understood by the relevant public as meaning ‘hoodies without a hood’.

The applicant submits that the Board of Appeal incorrectly dissected the sign into three word elements, namely ‘hood’, ‘less’ and ‘hoodies’, whereas the sign applied for, considered as a whole, namely the expression ‘hoodless hoodies’, has no meaning in English.

EUIPO disputes the applicant’s arguments.

In that regard, it must be borne in mind, as regards marks consisting of a number of word elements, that the issue of whether or not they are descriptive may be assessed, in part, in relation to each of those elements taken separately, but must, in any event, also be established in relation to the whole which they comprise. Accordingly, since the relevant public will perceive the mark applied for as a whole, it is any descriptiveness of the mark as a whole, and not of the various elements of that mark considered separately, which is important (see, to that effect, judgment of 14 September 2022, Lotion v EUIPO (BLACK IRISH), T‑498/21, not published, EU:T:2022:543, paragraph 21).

Furthermore, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, that consumer will break it down into word elements which, for him or her, have a specific meaning or which resemble words known to him or her (see judgment of 13 February 2019, Nemius Group v EUIPO (DENTALDISK), T‑278/18, not published, EU:T:2019:86, paragraph 53 and the case-law cited).

In the first place, as regards the meaning of the English words ‘hood’, ‘less’ and ‘hoodies’, it should be noted that the applicant does not dispute, as such, the meanings used by the Board of Appeal. There is therefore no need to call into question the definitions used by the Board of Appeal as set out in paragraph 25 above.

In the second place, it should also be noted that the combination of the words ‘hood’ and ‘less’ forms a single adjective which precedes the noun ‘hoodies’ and does not contain any particular feature relating to the linguistic, syntactical or grammatical rules of the English language. In those circumstances, the combination of the words ‘hoodless’ and ‘hoodies’ in a single expression cannot be meaningless for the English-speaking public, which will be able to identify both the word ‘hoodless’ and the word ‘hoodies’ in that expression. Indeed, the fact that the expression ‘hoodless hoodies’ contains two conflicting concepts cannot render meaningless the two words of which that expression is composed. Consequently, upon encountering that expression, the English-speaking general public will be able to recognise the concept of hoodies and the concept of the absence of a hood.

Therefore, the Board of Appeal was right to find, in paragraph 31 of the contested decision, that the combination of the English words ‘hoodless’ and ‘hoodies’ could be understood by the relevant public as meaning hoodies without a hood.

Assessment of the descriptive character of the mark applied for in relation to the goods concerned

The Board of Appeal found, in essence, that the link between the sign HOODLESS HOODIES and the apparel was close and that, as a result, it could be considered that, for a significant part of the relevant public, that sign described the kind of apparel concerned and the expected characteristic of that apparel, namely a sweater without a hood. It concluded that the mark applied for was descriptive of the goods at issue and was therefore caught by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001.

The applicant claims that the Board of Appeal wrongly held that the mark applied for was descriptive of the goods at issue. In that regard, it submits, in essence, that the sign applied for has no direct and specific link with the goods at issue. Furthermore, it submits that when the public perceives the sign applied for, a complex cognitive process is triggered in so far as it is faced with the juxtaposition of two concepts, the second of which is a negation of the first. Thus, on account of the unusual nature of the combination of words in the expression ‘hoodless hoodies’, the sign applied for is fanciful and original and cannot, therefore, be regarded as descriptive.

Moreover, the applicant complains that the Board of Appeal failed to take into account the existence of numerous registrations of signs similar to the sign applied for, as EU trade marks, and the registration of the sign applied for in the United Kingdom and the United States, which shows that that sign is not descriptive for the English-speaking public. Furthermore, extensive case-law relating to signs which have been found not to be descriptive shows that the Board of Appeal’s approach is incorrect in the present case.

EUIPO disputes the applicant’s arguments.

In that regard, it should be recalled, as has been noted in paragraph 30 above, that the applicant does not dispute the Board of Appeal’s assessments as regards the meaning of the English words ‘hoodless’, which means without a hood, and ‘hoodies’, which refers to a sweater with a hood. Accordingly, it has been found, in paragraph 32 above, that the expression ‘hoodless hoodies’ is capable of conveying the meaning of hoodies without a hood, which refers to sweaters.

Therefore, in relation to the apparel concerned, it should be noted that the word element ‘hoodies’ of the sign applied for is likely to convey to the relevant public information on a type of garment, namely a hoodie. Similarly, the word element ‘hoodless’ is likely to convey to the relevant public information on a characteristic inherent to that product, namely the fact that it has no hood.

39Therefore, since the expression ‘hoodless hoodies’ is capable of conveying the meaning ‘hoodies without a hood’, that expression may refer to sweaters or sweatshirts which are items of apparel in Class 25.

40In those circumstances, it cannot be ruled out that, at least for the English-speaking general public, there is a sufficiently direct and specific link between the expression ‘hoodless hoodies’ and the apparel in question.

41Therefore, the Board of Appeal was right to find, in paragraph 35 of the contested decision, that part of the relevant public will immediately and clearly understand that the sign applied for, in relation to apparel, describes a type of clothing which has the characteristic that it does not have a hood, namely a sweater or a sweatshirt.

42As regards the applicant’s argument that the expression ‘hoodless hoodies’ itself contains a contradiction, on account of the juxtaposition of two contradictory concepts, and therefore constitutes an unusual combination of words giving the sign applied for a fanciful and original character, it must be noted that, even if the combination of the contradictory words ‘hoodless’ and ‘hoodies’ were unusual, the fact remains that it contains two words which exist in English, and that the combination of those two words complies with the rules of English syntax.

43It should also be noted, as the Board of Appeal did in paragraph 35 of the contested decision, that the fact that the expression ‘hoodless hoodies’ is an oxymoron does not preclude the conclusion that that expression may have a descriptive meaning, namely that referring to sweaters or sweatshirts. According to the case-law, a word sign must therefore be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 23 November 2022, Allessa v EUIPO – Dumerth (CASSELLAPARK), T‑701/21, not published, EU:T:2022:724, paragraph 78 and the case-law cited).

44As regards the applicant’s arguments based on the numerous registrations of signs similar to the sign applied for as EU trade marks, it should be recalled that, according to settled case-law, the decisions concerning registration of a sign as an EU trade mark which EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of those boards (judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; order of 11 February 2021, Klose v EUIPO, C‑600/20 P, not published, EU:C:2021:110, paragraph 21, and judgment of 21 February 2024, Roethig López v EUIPO – William Grant & Sons Irish Brands (AMAZONIAN GIN COMPANY), T‑756/22, not published, EU:T:2024:101, paragraph 46).

45As regards the arguments based on the registration of the sign applied for in the United Kingdom and the United States, it must be borne in mind that the EU trade mark system is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see judgment of 6 September 2018, Bundesverband Souvenir – Geschenke – Ehrenpreise v EUIPO, C‑488/16 P, EU:C:2018:673, paragraph 72 and the case-law cited). Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules. EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State, or in a third country, that the sign in question is registrable as a national mark (judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47, and of 11 May 2010, Abadía Retuerta v OHIM (CUVÉE PALOMAR), T‑237/08, EU:T:2010:185, paragraph 137). That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word sign in question originated (judgments of 27 February 2002, STREAMSERVE, T‑106/00, EU:T:2002:43, paragraph 47, and of 14 June 2007, Europig v OHIM (EUROPIG), T‑207/06, EU:T:2007:179, paragraph 42).

46It follows from the foregoing that the Board of Appeal rightly concluded that the trade mark applied for was caught by the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001.

47The first plea must therefore be rejected as manifestly lacking any foundation in law.

The second and third pleas in law, alleging breach of the principles of equal treatment and good administration

48In support of its second plea, the applicant submits that the Board of Appeal breached the principle of equal treatment, as provided for in Article 20 of the Charter, read in conjunction with Article 41(2) of the Charter, in that it deviated from EUIPO’s practice without any reason to do so.

49In addition, in support of its third plea, the applicant submits that the Board of Appeal also breached the principle of good administration, within the meaning of Article 41 of the Charter, on account of its blatant breach of the principle of equal treatment.

50EUIPO disputes the applicant’s arguments.

51In that regard, it is worth recalling the case-law cited in paragraphs 44 and 45 above, according to which the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of the decision-making practice of EUIPO or a previous national decision-making practice. Accordingly, EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State that a sign is registrable as a national trade mark.

52It is true that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principles of equal treatment and good administration. In the light of those two principles, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with particular care whether it should decide in the same way or not. However, the way in which the principles of equal treatment and good administration are applied must be consistent with respect for legality. Consequently, a person who applies for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of good administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77, and of 14 December 2018, Dermatest v EUIPO (ORIGINAL excellent dermatest), T‑803/17, not published, EU:T:2018:973, paragraphs 58 and 59).

53As noted in paragraph 46 above, the Court considers that the Board of Appeal correctly concluded that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001.

54In those circumstances, in the light of the case-law cited in paragraph 52 above, the Board of Appeal did not breach the principles of equal treatment and good administration in finding that, despite the registrations of the mark in the United Kingdom and in the United States, and previous registrations of other trade marks with EUIPO, the absolute ground for refusal in Article 7(1)(c) of Regulation 2017/1001 precluded registration of the sign applied for.

55The second and third pleas must therefore be rejected as manifestly lacking any foundation in law.

56It follows from all of the foregoing that the action must be dismissed in its entirety as manifestly lacking any foundation in law.

Costs

57Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

58Although the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.

On those grounds,

hereby orders:

1.The action is dismissed.

2.The parties shall each bear their own costs.

Luxembourg, 7 April 2025.

Registrar

President

—

Language of the case: English.