Putting Your Best Foot Forward - 'HOT SOX' Neither Descriptive Nor Non-Distinctive

Decision

The EU General Court has confirmed OHIM's Board of Appeal decision in rejecting an application for invalidity of the trade mark 'HOT SOX' for hosiery which is registered as a Community trade mark ("CTM").

It confirmed that the trade mark was not descriptive of the goods nor was it devoid of distinctive character under EU law.

Matters Determined

Words Not Descriptive

The General Court noted that hosiery is commonly made from net fabric and includes items like socks, were everyday consumer goods and its sale is mainly aimed at an average consumer with a normal level of attention. As the mark was composed of English words, it was with regard to the English-speaking public in the EU that its descriptive character had to be considered.

It was claimed that the CTM was invalid on the basis that the word 'SOX', despite a deliberate misspelling, would be understood as referring to 'socks' as an item of hosiery and was therefore descriptive of articles of hosiery.

However, evidence showed that 'SOX' was used as a trade mark. The Court noted that the correct spelling of the word 'socks' was used alongside 'SOX' therefore indicating that 'SOX' was a trade mark and not descriptive of the goods.

With regard to the word 'HOT' the General Court held that the Board of Appeal had been right to consider the word in the literal sense. In this sense it had a meaning of 'extremely warm' or of a 'high temperature' whereas socks were worn by people to warm, or to keep warm, their feet. It was the opinion of the General Court that no consumer would want to wear socks that caused them to experience excessively warm feet. Consequently the word 'HOT' was not descriptive of the goods and did not define the characteristics of the goods in question.

The General Court added that in any event it was not enough that one of the elements may be descriptive as descriptive character must be established for the mark as a whole, therefore the court will look at the whole of a mark before determining whether it is descriptive or not.

On this basis the combination of the words making up the mark i.e. 'HOT SOX', was not descriptive of the goods in question.

Distinctive Character

In terms of distinctive character, the word 'HOT' was unusual when used in connection with hosiery and an incorrect spelling of the word socks which meant it had a distinctive character. Again considering the mark as a whole rather than its constituent parts the General Court held that it did have distinctive character.

Overall Finding of the General Court

The General Court took the view that the combination of the words or elements 'HOT' and 'SOX was not descriptive of the goods and was distinctive enough to gain protection as CTM.

The full decision can be read here - provima Warenhandels GmbH v OHIM, Case T-543/14, 26 February 2016.

If you are affected by any of the issues raised in the article above or have any questions or queries regarding your business do not hesitate to contact McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com