Order — ECLI:EU:T:2026:321
Date: 2026-05-05
Language of the case: English

ORDER OF THE GENERAL COURT (Fifth Chamber) 5 May 2026 (*) ( EU trade mark – Application for EU word mark TOTALLY HANDS FREE – Absolute grounds for refusal – Descriptive character – No distinctive character – Article 7(1)(b) and (c) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law ) In Case T‑733/25, Skechers USA, Inc. II, established in Manhattan Beach, California (United States), represented by J. Bogatz, Y. Stone, G. Engels, J. Graf Wrangel, L. Bieber and E. Peller, lawyers, applicant, v European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent, defendant, THE GENERAL COURT (Fifth Chamber), composed of M. Sampol Pucurull, President, T. Pynnä (Rapporteur) and M. Brkan, Judges, Registrar: V. Di Bucci, makes the following Order 1 By its action based on Article 263 TFEU, the applicant, Skechers USA, Inc. II, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 August 2025 (Case R 512/2025-4) (‘the contested decision’). Background to the dispute 2 On 16 September 2024, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign TOTALLY HANDS FREE. 3 The mark in respect of which registration was sought covered the 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’. 4 By decision of 21 February 2025, the examiner rejected the application for registration of the mark on the basis of Article 7(1)(b) and (c) of 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), in conjunction with Article 7(2) of that regulation. 5 On 21 March 2025, the applicant filed a notice of appeal with EUIPO against the examiner’s decision. 6 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the mark applied for was descriptive and devoid of distinctive character within the meaning of Article 7(1)(b), Article 7(1)(c) and Article 7(2) of Regulation 2017/1001. Forms of order sought 7 The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. 8 EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs in the event that a hearing is convened. Law 9 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. 10 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). 11 The applicant relies on two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001 and, secondly, infringement of Article 7(1)(b) of that regulation. The first plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001 12 The applicant submits, in essence, that the Board of Appeal made an incorrect assessment of the descriptive character of the mark applied for. 13 EUIPO disputes the applicant’s arguments. 14 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. 15 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 and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or of 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). 16 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 persons have 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). 17 Descriptive signs or indications are deemed incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (see, to that effect, 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). 18 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. – The relevant public and territory 19 The Board of Appeal found, as regards the goods at issue, namely footwear in Class 25, that the relevant public was the general public, whose level of attention was not higher than average. It also stated that, as the mark applied for was made up of English words, the absolute ground for refusal had to be assessed by reference to the English-speaking public of the European Union. The Board of Appeal found that, in addition to the public in Ireland and Malta, that public consisted of the public in those Member States in which English is widely understood, such as Denmark, Cyprus, the Netherlands, Finland and Sweden. 20 The applicant submits that the mark applied for is not composed of basic English terms. Accordingly, the applicant claims that the descriptive character of the sign can only be assessed with regard to the general public in Ireland and Malta, where English is an official language. 21 EUIPO disputes the applicant’s arguments. 22 In the present case, there is no need to call into question the Board of Appeal’s assessment that the relevant public is the general public with a level of attention that is not higher than average, which is not challenged by the applicant. 23 As regards the relevant territory and the applicant’s arguments challenging the fact that the English-speaking public in Member States other than Ireland and Malta was taken into account, it must be borne in mind 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. Moreover, that part may be limited to a single Member State (see, to that effect, judgment of 10 July 2024, Bartex Bartol v EUIPO – Grupa Chorten (duch puszczy), T‑473/23, not published, EU:T:2024:458, paragraph 46 and the case-law cited). 24 In the present case, the Board of Appeal was correct to find, in paragraph 19 of the contested decision, that the general public in Ireland and Malta was part of the relevant public, a finding which the applicant does not dispute. In those circumstances, the applicant’s arguments, relating to the relevant public and whether the terms making up the mark applied for are basic English words, must be rejected as ineffective. – The descriptive character of the mark applied for in relation to the goods at issue 25 The Board of Appeal found, in essence, that the sign TOTALLY HANDS FREE would be immediately understood by at least a significant part of the relevant public as meaning that the footwear in question is put on without the use of one’s hands. Furthermore, it found that the mark applied for conveys direct and specific information about easily recognisable characteristics of the goods, which would be perceived without any interpretative effort or cognitive leaps by at least a significant part of the English-speaking public. The Board of Appeal considered that the link between the sign and the goods at issue is sufficiently close for the sign to fall within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001. 26 The applicant submits that the Board of Appeal was incorrect in considering that the expression ‘totally hands free’ would be perceived by the relevant public as referring to footwear. According to the applicant, the consumer must go through a complex thought process in order to make any sense of the expression, as it submits that the mark applied for does not appear in any dictionary and the element ‘hands free’ can have multiple meanings. It also claims that the relevance of free hands in relation to footwear is not immediately clear, since hands would naturally be free when one wears footwear and, therefore, the mark applied for is not a characteristic of footwear. Furthermore, the applicant considers that the Board of Appeal should have taken into consideration the registration of comparable EU trade marks as well as the registration in the United Kingdom of a sign identical to the mark applied for. 27 EUIPO disputes those arguments. 28 First of all, as regards the meaning of the mark applied for, the Court has already held that the expression ‘hands free’ is understood by the relevant public as conveying the message that the footwear may be put on and worn without using one’s hands (see, to that effect, orders of 7 April 2025, Skechers USA v EUIPO (HANDS FREE FIT), T‑254/24, not published, EU:T:2025:393, paragraph 33, and of 11 December 2025, Skechers USA v EUIPO (HANDS FREE SLIP-INS), T‑254/25, not published, EU:T:2025:1104, paragraph 30). In those cases, the Court held that the Board of Appeal was correct to find that the marks applied for were descriptive of the goods at issue. 29 Contrary to what is claimed by the applicant, the mark applied for does not trigger a complex thought process. The English-speaking public of the European Union is able, without further thought, to perceive the characteristic of putting on footwear without using one’s hands when encountering the expression containing the words ‘hands free’ in connection with footwear (see, to that effect, order of 7 April 2025, HANDS FREE FIT, T‑254/24, not published, EU:T:2025:393, paragraphs 40 and 43, and of 11 December 2025, HANDS FREE SLIP-INS, T‑254/25, not published, EU:T:2025:1104, paragraphs 46 and 49). 30 It should also be observed that a sign’s descriptiveness cannot be assessed other than by reference to the goods at issue, namely footwear in the present case, and by reference to the understanding which the relevant public has of it, as is clear from the case-law recalled in paragraph 16 above. Furthermore, the applicant does not dispute the fact that even one of the possible meanings among those raised before EUIPO is sufficient to confer on the expression ‘totally hands free’ a descriptive character inasmuch as such a meaning evokes a characteristic of the goods at issue (see, to that effect, orders of 7 April 2025, HANDS FREE FIT, T‑254/24, not published, EU:T:2025:393, paragraph 30 and the case-law cited, and of 11 December 2025, HANDS FREE SLIP-INS, T‑254/25, not published, EU:T:2025:1104, paragraph 38 and the case-law cited). 31 As regards the applicant’s arguments based on the numerous registrations of signs similar to the mark applied for as EU trade marks, it must be borne in mind 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 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 (see, to that effect, orders of 7 April 2025, HANDS FREE FIT, T‑254/24, not published, EU:T:2025:393, paragraph 47 and the case-law cited, and of 11 December 2025, HANDS FREE SLIP-INS, T‑254/25, not published, EU:T:2025:1104, paragraph 52 and the case-law cited). 32 Furthermore, in the cases cited in paragraph 31 above, the signs that included the terms ‘hands free’ were refused registration as EU trade marks on the grounds that they were descriptive of the goods at issue. In that regard, the Board of Appeal has not failed to respect earlier decisions. 33 Lastly, as regards the arguments on the registration in the United Kingdom of a sign identical to the mark applied for, it must be recalled that, as is clear from the case-law, EUIPO and 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. 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 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 and the case-law cited). 34 Consequently, the Board of Appeal was correct to find, in paragraph 30 of the contested decision, that, in relation to the footwear covered by the mark applied for, the expression ‘totally hands free’ was liable to be perceived directly by the relevant public as conveying information about the kind of goods at issue and their method of use, namely shoes that can be put on without the use of one’s hands. The Board of Appeal cannot be criticised for finding that the mark applied for was descriptive of the goods at issue. 35 It follows from the foregoing that the Board of Appeal correctly concluded that the trade mark applied for was caught by the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001. 36 The first plea must therefore be rejected as manifestly lacking any foundation in law. The second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001 37 In support of its second plea, the applicant submits, in essence, that the Board of Appeal misapplied the requirements for the assessment of the distinctive character of the mark applied for. According to the applicant, the sign is sufficiently unusual that the relevant consumer would perceive it as an indication of origin. 38 EUIPO disputes the applicant’s arguments. 39 It is apparent from Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign not to be registrable as an EU trade mark (see, to that effect, judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and order of 11 December 2025, HANDS FREE SLIP-INS, T‑254/25, not published, EU:T:2025:1104, paragraph 59 and the case-law cited). 40 Since it has been established in the present case that the mark applied for was descriptive of the goods at issue, within the meaning of Article 7(1)(c) of Regulation 2017/1001, it is not necessary to examine the merits of the applicant’s arguments relating to the distinctive character of the mark applied for, which concern the absolute ground for refusal provided for in Article 7(1)(b) of Regulation 2017/1001. 41 It follows from the foregoing that the second plea must be rejected as ineffective and, as a result, the action must be dismissed in its entirety as manifestly lacking any foundation in law. Costs 42 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 43 Although the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs in the event that an oral hearing is convened. Since no hearing has been organised, it is appropriate to order each party to bear its own costs. On those grounds, THE GENERAL COURT (Fifth Chamber) hereby orders: 1. The action is dismissed. 2. Each party shall bear its own costs. Luxembourg, 5 May 2026. V. Di Bucci M. Sampol Pucurull Registrar President * Language of the case: English.