ORDER OF THE GENERAL COURT (Second Chamber)
7 April 2025 (*)
( EU trade mark – Application for EU word mark STEP IN AND GO – Absolute ground for refusal – No distinctive character – Article 7(1)(b) 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‑81/24,
Skechers USA, Inc. II, established in Manhattan Beach, California (United States), represented by J. Bogatz, Y. Stone and J. Feigl, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, 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
Order
1        By its action under 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 14 December 2023 (Case R 1730/2023-4) (‘the contested decision’).
Background to the dispute
2        On 12 January 2023, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign STEP IN AND GO, 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).
3        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’.
4        By decision of 27 July 2023, the examiner rejected the application for registration of that mark on the basis of Article 7(1)(b) of Regulation 2017/1001.
5        On 14 August 2023, 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 devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001. In essence, it found that that mark would be perceived by the relevant public as a promotional and laudatory message, and not as an indication of the commercial origin of the goods at issue.
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, in essence, on three pleas in law, alleging, first, infringement of Article 7(1)(b) of Regulation 2017/1001, secondly, breach of the principle of equal treatment as provided for 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, within the meaning of Article 41(1) and (2) of the Charter.
The first plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
12      The applicant submits, in essence, that the Board of Appeal did not correctly assess the distinctive character of the sign applied for.
13      EUIPO disputes the applicant’s arguments.
14      Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.
15      For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
16      It is in the light of those considerations that the Court must examine whether, as the applicant submits in the context of that plea, the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001 by analysing, first, the relevant public, next, the meaning conveyed by the sign applied for and, lastly, whether that sign has distinctive character in respect of the goods at issue.
The relevant public
17      The Board of Appeal considered, in essence, in paragraph 15 of the contested decision, that the relevant public was the general public, whose level of attention is average. Furthermore, it added, in paragraph 16 of the contested decision, that that public was the English-speaking public of the European Union. In the present case, there is nothing in the file capable of calling into question those findings, which are not disputed by the applicant.
The meaning of the sign applied for
18      The Board of Appeal endorsed the examiner’s assessments relating to the meaning of the sign applied for and found that that sign would be perceived by the relevant public as meaning ‘put on and move’.
19      The applicant submits that the Board of Appeal artificially dissected the sign applied for in order to assess its meaning. It states, in that regard, that that method used by the Board of Appeal is not common practice and is clearly erroneous. It also claims that the Board of Appeal did not give enough weight to the various possible meanings of the expression ‘step in’ and the word ‘go’, or to the associations of words and concepts which might be apparent from the meaning of the sign applied for taken as a whole. In particular, as regards the meaning of the expression ‘step in’, the applicant maintains that there are various possible interpretations of that expression, and that these can be found in established dictionaries. It concludes that the ambiguity and multitude of interpretations of the sign applied for make it fanciful and memorable.
20      EUIPO disputes the applicant’s arguments.
21      As a preliminary point, it must be borne in mind that it is settled case-law that, in the case of compound word signs, in order to assess whether or not a mark is devoid of any distinctive character, the overall impression given by it should be taken into consideration. That does not mean, however, that one may not first examine each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see judgment of 13 September 2023, Ecoalf Recycled Fabrics v EUIPO (BECAUSE THERE IS NO PLANET B), T‑324/22, not published, EU:T:2023:536, paragraph 38 and the case-law cited).
22      In the present case, in paragraph 17 of the contested decision, the Board of Appeal endorsed the examiner’s finding that the expression ‘step in and go’, as a whole, would be understood by the English-speaking public as meaning ‘put on and move’. To that end, the Board of Appeal, like the examiner, relied on the dictionary definitions of the words making up the sign applied for. Accordingly, as regards the expression ‘step in’, the Board of Appeal endorsed the approach of the examiner, who had noted that that expression, in relation to clothing and other garments, indicated that they could be put on by being stepped into or that they could be put on without fastenings. Thus, in relation to shoes, the expression ‘step in’ referred to the action of putting them on in an easy way. In addition, the Board of Appeal stated that the addition of the expression ‘and go’ emphasised a desirable feature of the goods at issue, namely that the footwear may simply be stepped into and one is ready to go. In those circumstances, the Board of Appeal stated that it could be inferred that the relevant public would clearly perceive the expression ‘step in and go’ as meaning ‘put on and move’.
23      Therefore, contrary to what the applicant submits, the Board of Appeal did not confine itself to examining individually the words making up the sign applied for, but rather took into consideration the overall impression that the sign applied for was likely to convey to the relevant public.
24      As regards, more specifically, the meaning of the phrasal verb ‘step in’, the applicant submits that the meaning adopted by the Board of Appeal, which it does not moreover dispute, as such, is only one of its possible meanings which does not reflect the actual perception of the relevant public. On the other hand, the fact that there are several possible interpretations of that verb demonstrates that its meaning is ambiguous and has multiple connotations.
25      In that regard, it must be held, as observed by the Board of Appeal in paragraphs 21 and 22 of the contested decision, that the meaning of the expression ‘step in’ must be examined in the context of footwear. In those circumstances, the Board of Appeal was right to find, on the basis of the meanings taken from an English dictionary, that the expression ‘step in’ in relation to footwear would be perceived by the relevant public as referring to the action of putting on that footwear in an easy way, because there would be no need to adjust the shoes or tie laces, as it is sufficient just to step into them.
26      Furthermore, it is noteworthy that even if, when viewed in isolation, the conceptual content of the phrasal verb ‘step in’, which forms part of the sign applied for, has several meanings, the fact remains that, in the context of footwear, that phrasal verb could not reasonably convey the meanings put forward by the applicant, in particular that referring to becoming involved in a difficult situation or argument in order to help find a solution or that of coming or going indoors or entering a house or apartment casually or for a short visit.
27      Moreover, the applicant does not put forward any specific arguments or evidence to establish that the relevant public would be likely to associate, in the context of the mark applied for, the phrasal verb ‘step in’ with the English expression ‘to step into somebody’s shoes’, which means to replace someone.
28      As regards the expression ‘and go’, the applicant submits that the word ‘go’ is used in connection with most goods available on the market, since it is among the 100 most common words in the English language, and could be interpreted either in a literal sense, as referring to the action of moving, or in a figurative sense, as referring to the act of transferring from one state to another.
29      In that regard, it should be recalled that distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001, must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception by the relevant public of the sign as a whole. However, the group of words ‘and go’ forms part of the expression ‘step in and go’, which, in relation to footwear, cannot reasonably be perceived by the relevant public as referring to the act of transferring from one state to another, but rather to the action of putting on footwear and being ready to go, as the Board of Appeal rightly held.
30      It follows that the Board of Appeal correctly held that the expression ‘step in and go’, in relation to footwear, could be perceived immediately by the relevant public as meaning ‘put on and move’.
The distinctive character of the mark applied for in respect of the goods at issue
31      In paragraphs 26 and 27 of the contested decision, the Board of Appeal held that, having regard to its meaning in relation to the goods at issue, the sign applied for consists of a laudatory expression highlighting positive aspects of those goods, namely that they are easy for the consumer to put on and use, which is a clear and unambiguous promotional message in relation to those goods. It concluded that the mark applied for was devoid of any distinctive character and that it was therefore not capable of serving as an indication of the commercial origin of the goods at issue, within the meaning of Article 7(1)(b) of Regulation 2017/1001.
32      The applicant claims that the Board of Appeal erred in finding that the mark applied for was devoid of distinctive character in respect of the goods at issue.
33      EUIPO disputes the applicant’s arguments.
34      In that regard, it must be recalled that the registration of a mark made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use (judgment of 21 October 2004, OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraph 41).
35      It also follows from the case-law that although all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, they can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57, and of 22 March 2017, Hoffmann v EUIPO (Genius), T‑425/16, not published, EU:T:2017:199, paragraph 28).
36      It follows that a trade mark consisting of an advertising slogan must be regarded as being devoid of any distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (judgments of 11 December 2012, Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, not published, EU:T:2012:663, paragraph 22, and of 6 June 2013, Interroll v OHIM (Inspired by efficiency), T‑126/12, not published, EU:T:2013:303, paragraph 24). More specifically, this applies where a sign indicates to the consumer a characteristic of the goods or services covered by that sign that, whilst not specific, comes from promotional or advertising information which the relevant public will perceive as such, rather than as an indication of the commercial origin of the goods or services (judgments of 17 March 2016, Mudhook Marketing v OHIM (IPVanish), T‑78/15, not published, EU:T:2016:155, paragraph 25; of 14 July 2016, Volkswagen v EUIPO (ConnectedWork), T‑491/15, not published, EU:T:2016:407, paragraph 32; and of 1 February 2023, Groschopp v EUIPO (Sustainability through Quality), T‑253/22, not published, EU:T:2023:29, paragraph 27).
37      It is in the light of those considerations that it is necessary to examine whether, as the applicant claims, the Board of Appeal erred in finding that the mark applied for was devoid of any distinctive character in respect of the goods at issue.
38      First, in so far as the applicant submits that the relevant public is likely to perceive the mark applied for as an indication of the commercial origin of the goods at issue, and not merely as a promotional slogan, since the expression ‘step in and go’ would be perceived as an imaginative play on words, it should be recalled that, as indicated in paragraph 22 above, the Board of Appeal was right to find that the sign applied for would clearly convey to the relevant public the message that it is easy for that public to put on and use the footwear in question. Indeed, in so far as the expression ‘step in and go’ is made up of words appearing in English dictionaries, which are used in accordance with the grammatical rules of that language, and is capable of conveying to the relevant public a clear message relating to a desirable feature of the goods at issue, it cannot therefore be classified as an imaginative play on words. Moreover, although the applicant relies on other meanings of the expression ‘step in and go’, they are not immediately perceptible by the relevant public, as pointed out in paragraphs 24 to 30 above.
39      Secondly, the applicant is not justified in claiming that the Board of Appeal failed to establish that there was a direct or specific link between the footwear and the mark applied for, since it is common ground that registration of the mark was applied for in respect of footwear in Class 25. As pointed out in paragraph 29 above, distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001, must be assessed by reference to the goods or services in respect of which registration has been applied for and, moreover, by reference to the perception of the relevant public.
40      Thirdly, with regard to the applicant’s arguments claiming that the Board of Appeal failed to produce any evidence to establish that the sign applied for constituted an expression commonly used in the context of the goods at issue, it should be noted that, according to the case-law cited in paragraph 36 above, a trade mark is considered to be devoid of distinctive character if it is capable of being perceived by the relevant public only as a mere promotional formula. It is therefore not necessary to show that the sign is actually used in the trade as a promotional formula.
41      It follows that the Board of Appeal correctly held that the expression ‘step in and go’, in relation to footwear, would be perceived by the relevant public only as a promotional slogan highlighting the fact that it is sufficient to step into the goods at issue in order to be able to move around, without having to adjust them or tie laces, suggesting that they can be put on easily and quickly, while moving freely. In those circumstances, the Board of Appeal was right to find that the mark applied for will not be perceived by the relevant public as an indication of the commercial origin of those goods.
42      Fourthly, as regards the applicant’s arguments based on the existence of earlier registrations of marks allegedly similar to the sign applied for, 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 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 (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).
43      Moreover, it is precisely for reasons of legal certainty and of good administration that 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, because the registration of a sign as an EU trade 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 (see judgment of 13 May 2020, Global Brand Holdings v EUIPO (XOXO), T‑503/19, not published, EU:T:2020:183, paragraph 58 and the case-law cited).
44      In the present case, the Board of Appeal was fully entitled to find that the sign applied for was caught by the ground of refusal laid down in Article 7(1)(b) of Regulation 2017/1001, with the result that the applicant cannot successfully rely on previous decisions of EUIPO in order to invalidate that conclusion.
45      Lastly, as regards the registration of the sign applied for in the United Kingdom, on which the applicant relies in order to claim that that registration shows that the English-speaking public perceives the sign applied for as an indication of the commercial origin of the goods, it should 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 on the basis of the relevant EU rules alone. 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).
46      In the light of the foregoing, it must be held that the Board of Appeal correctly concluded that the mark applied for was devoid of distinctive character.
47      It follows that the first plea must 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
48      The applicant submits, in support of its second plea, 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, first, it deviated from EUIPO’s practice, as summarised in its guidelines, without any reason and, secondly, it relied on irrelevant and biased considerations, with no legal basis.
49      In addition, in support of its third plea, the applicant submits that, by breaching the principle of equal treatment, the Board of Appeal also breached the principle of good administration, within the meaning of Article 41 of the Charter.
50      EUIPO disputes the applicant’s arguments.
51      It is important to note that, in accordance with the case-law cited in paragraph 42 above, in the present case, EUIPO exercises circumscribed powers which must be assessed on the basis of Regulation 2017/1001, and not by reference to EUIPO’s previous administrative practice, even if that practice is laid down in its internal guidelines.
52      Furthermore, EUIPO is also under a duty to exercise its powers in accordance with the general principles of EU law, including 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. Nevertheless, 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 in someone else’s favour (see judgment of 13 May 2020, XOXO, T‑503/19, not published, EU:T:2020:183, paragraph 57 and the case-law cited). Moreover, in accordance with the case-law cited in paragraph 43 above, the examination of an application for registration must be undertaken in each individual case.
53      However, it is clear from the case-law that, although the EUIPO examination guidelines lack binding force, they are a reference source on EUIPO’s practice in respect of trade marks (see judgment of 8 June 2022, Muschaweck v EUIPO – Conze (UM), T‑293/21, EU:T:2022:345, paragraph 38 and the case-law cited).
54      Those guidelines are a consolidated set of rules setting out the course of action which EUIPO itself proposes to adopt, with the result that, provided that those rules are consistent with legal provisions of higher authority, they constitute a self-imposed restriction on EUIPO, namely that of compliance with the rules which it has itself laid down (see judgment of 8 June 2022, UM, T‑293/21, EU:T:2022:345, paragraph 39 and the case-law cited).
55      That said, it should be noted that Part B, Section 4, Chapter 3, point 5, of the EUIPO examination guidelines, relating to the distinctiveness of advertising slogans, provides that an advertising slogan is likely to be distinctive whenever it is seen as more than a mere advertising message extolling the qualities of the goods or services in question because it constitutes a play on words or introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, or has some particular originality or resonance, or triggers in the minds of the relevant public a cognitive process or requires an interpretative effort. Furthermore, it is stated that a slogan may be recognised as having distinctive character if it has unusual syntactical structures or uses linguistic and stylistic devices such as alliteration, metaphor, rhyme or paradox.
56      In the present case, first, it is not apparent from the contested decision that the Board of Appeal based that decision on irrelevant and biased considerations which deviate from EUIPO’s practice. Secondly, it must be noted, as has been stated in paragraphs 24 to 30 above, that the sign applied for in the present case had no unusual meaning since it does not trigger a complex cognitive process and does not constitute a play on words. Furthermore, it must be held, as is apparent from paragraph 46 above, that the Board of Appeal correctly concluded that the mark applied for was devoid of distinctive character. Lastly, and in any event, it follows from those findings that the Board of Appeal acted in accordance with the content of the EUIPO examination guidelines. Thus, the applicant is not justified in claiming that the Board of Appeal breached the principle of equal treatment and the principle of good administration, in that it deviated from EUIPO’s practice as set out in its guidelines.
57      The second and third pleas in law must therefore be rejected as manifestly lacking any foundation in law.
58      It follows from all of the foregoing that the action must be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
59      Under 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.
60      Although 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,
THE GENERAL COURT (Second Chamber)
hereby orders:
1.      The action is dismissed.
2.      The parties shall each bear their own costs.
Luxembourg, 7 April 2025.
V. Di Bucci
A. Marcoulli
Registrar
President
*      Language of the case: English.