ORDER OF THE GENERAL COURT (Second Chamber)
7 April 2025 (*)
( EU trade mark – Application for EU word mark HANDS FREE FIT – Absolute grounds for refusal – Descriptive character – No distinctive character – Article 7(1)(b) and (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‑254/24,
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 19 March 2024 (Case R 2417/2023-4) (‘the contested decision’).
Background to the dispute
2        On 10 February 2023, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign HANDS FREE FIT, 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 24 October 2023, the examiner rejected the application for registration of that mark, on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001.
5        On 7 December 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 descriptive and devoid of any distinctive character within the meaning of Article 7(1)(b) and (c) of Regulation 2017/1001. In essence, it found that the link between the sign applied for and the goods at issue was sufficiently close in that the mark applied for conveyed direct and specific information about easily recognisable characteristics of those goods.
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 four pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001, secondly, infringement of Article 7(1)(b) of that regulation, thirdly, 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, fourthly, 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)(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      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).
16      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).
17      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).
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 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.
The relevant public and territory
19      In paragraph 14 of the contested decision, the Board of Appeal found, in essence, as regards the goods at issue, namely footwear in Class 25, that the relevant public was the general public, whose level of attention is average. Furthermore, in paragraph 15 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 English is widely understood, such as Denmark, Cyprus, the Netherlands, Finland and Sweden.
20      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, has only a very basic knowledge, if any, of the English language, outside the Member States where the official language is English. It adds, in essence, that the meaning of the word ‘fit’, according to a reputable English dictionary, is categorised as C1 of the Common European Framework of Reference, which, in the applicant’s view, means that that word is not perceived as a basic English word. 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, nor an adequate statement of reasons in the contested decision, to support the claim that the expression ‘hands free fit’ was composed of basic English terms which would therefore be understood by the public in EU Member States where English is not an official language.
21      EUIPO disputes the applicant’s arguments.
22      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.
23      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 and 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 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
25      The Board of Appeal endorsed the examiner’s assessments relating to the meaning of the sign applied for and set out in paragraph 17 of the contested decision. In particular, it approved the definitions taken from a reputable dictionary and used by the examiner. Accordingly, the Board of Appeal endorsed the definition adopted by the examiner, according to which the expression ‘hands free’ means not requiring the use of one’s hands. The Board of Appeal also approved the examiner’s definition of the word ‘fit’, namely suitable to a purpose or design. It thus found that the sign applied for would be understood by the relevant public in relation to the goods at issue as meaning that those goods can be put on and worn without using one’s hands.
26      The applicant submits that the Board of Appeal erred in its assessment of the meaning of the sign applied for. First, it states that the Board of Appeal was wrong to find that the expression ‘hands free fit’ referred directly to footwear. Secondly, it claims that the Board of Appeal did not give enough weight to the various possible meanings of the sign applied for, such as the meaning that the footwear was produced without hands (that is to say, using a fully automated technology) or the meaning of someone modelling something with their hands. Thirdly, the Board of Appeal wrongly relied on screenshots of websites which make no reference to the expression ‘hands free fit’.
27      EUIPO disputes the applicant’s arguments.
28      In the first place, as regards the meaning of the expression ‘hands free’ and the word ‘fit’, it should be noted that the applicant does not dispute, as such, the meanings used by the Board of Appeal.
29      On the other hand, first, the applicant submits that the Board of Appeal’s interpretation of the definitions of those terms is incorrect in the context of footwear, since it should refer not to the use of footwear, but to the fitting process which precedes their use. However, in that regard, it should be noted that the applicant has not adduced any evidence to show that the first meaning conveyed by the sign applied for relates to footwear being produced without human intervention. Thus, it cannot be held that the expression ‘hands free fit’ has that meaning in relation to footwear.
30      Secondly, in so far as the applicant claims that the Board of Appeal failed to take account of the other possible meanings of those words, or of the associations and concepts which could be conveyed by the sign applied for, it must be borne in mind that the fact that that sign may have several meanings does not preclude the application of the absolute ground for refusal provided for in Article 7(1)(c) of Regulation 2017/1001. According to settled case-law, a word sign must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
31      In the second place, as regards the applicant’s assertion that the expression ‘hands free fit’ does not refer directly to footwear, it must be noted that there is no evidence to support such an assertion. Indeed, as the Board of Appeal found, and in accordance with the definitions it adopted, as set out in paragraph 25 above, which have not been disputed as such by the applicant, the expression ‘hands free fit’, in relation to the goods at issue, is capable of meaning that those goods may be put on and worn without the use of one’s hands.
32      In the third place, as regards the applicant’s arguments concerning the website screenshots, set out in the examiner’s decision and referred to by the Board of Appeal, it is sufficient to note that the Board of Appeal relies on those screenshots only in order to illustrate that the possibility of putting shoes on without bending over is a marketable quality of those goods.
33      Consequently, the Board of Appeal was right to find that the sign applied for would be understood by the relevant public as meaning that the goods at issue may be put on and worn without using one’s hands.
Assessment of the descriptive character of the mark applied for in relation to the goods at issue
34      The Board of Appeal found, in essence, in paragraphs 18 to 33 of the contested decision, that the mark applied for, taken as a whole in relation to the goods at issue, had a sufficiently direct link with those goods, with the result that it would convey direct and specific information about characteristics of those goods which are easily recognisable by at least a significant part of the English-speaking public of the European Union. Accordingly, in paragraph 34 of the contested decision, it concluded that the mark applied for was descriptive of the goods at issue, within the meaning of Article 7(1)(c) of Regulation 2017/1001.
35      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 and that it makes no reference to any of their characteristics. Furthermore, it submits that when the public perceives the sign applied for, a complex cognitive process is triggered in so far as there are several possible interpretations of that sign, which, given that it does not appear in any dictionary, is a fanciful expression.
36      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, in particular the EU trade mark EXACT FIT for footwear, as well as the registration of the sign applied for in the United Kingdom and the procedure for its registration in the United States, which shows that that sign is not descriptive for the English-speaking public. In addition, 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.
37      EUIPO disputes the applicant’s arguments.
38      In that regard, it should be recalled, as has been stated in paragraph 28 above, that the applicant does not dispute as such the meanings of the expression ‘hands free’ and of the word ‘fit’, used by the Board of Appeal.
39      Furthermore, as is clear from the case-law referred to in paragraph 17 above, a sign’s descriptiveness cannot be assessed other than by reference to the goods concerned and by reference to the understanding which the relevant public has of it.
40      In those circumstances, the Board of Appeal cannot be criticised for finding that, upon encountering the expression ‘hands free fit’ in connection with footwear in Class 25, the English-speaking public of the European Union would establish a direct and specific link between the sign applied for and those goods, enabling it immediately to perceive, without further thought, the characteristic of allowing the user to step straight into them without having to bend over or deal with fastenings.
41      Therefore, the Board of Appeal was right to find, in paragraph 21 of the contested decision, that a significant part of the relevant public would immediately and clearly understand that the sign applied for, in relation to footwear, describes easily recognisable characteristics of those goods.
42      Contrary to what is claimed by the applicant, which disputes that the sign applied for refers to a characteristic of the goods at issue, the Board of Appeal was right to find that the possibility of putting on footwear without bending over or dealing with fastenings is capable of constituting a characteristic relating to the kind, quality or method of use of those goods.
43      It must be held, as was found by the Board of Appeal, that in the context of footwear, the expression ‘hands free fit’ conveys direct and specific information about the kind and quality of the goods at issue, since, while it is customary to use one’s hands to put on shoes, the mark applied for, taken as a whole, conveys the message that footwear can be put on or adjusted without using one’s hands. Thus, contrary to what the applicant claims, the characteristic which is objective and inherent to the nature of the footwear and is conveyed by the sign applied for is that those goods can be put on and adjusted to the foot without the use of one’s hands. For that reason, the example relied on by the applicant, relating to the case which gave rise to the judgment of 15 September 2017, Lidl Stiftung v EUIPO – Primark Holdings (LOVE TO LOUNGE) (T‑305/16, not published, EU:T:2017:607), cannot be transposed to the present case, since it concerned a sign conveying an abstract message not directly linked to the goods covered by the mark LOVE TO LOUNGE.
44      Furthermore, as the Board of Appeal correctly found, in paragraph 29 of the contested decision, the efficacy of having merely to put on the footwear without needing to use one’s hands is a marketable quality of the goods at issue.
45      Moreover, the fact that the expression ‘hands free fit’, taken as a whole, does not appear, as such, in the dictionary does not mean that a cognitive process is triggered in the mind of the relevant public when it perceives the sign applied for. Since the various word elements of the sign applied for are words that can be found in English dictionaries, the English-speaking public will be able to recognise them and, therefore, understand their meaning without any effort, for the purposes of the case-law referred to in paragraph 16 above. In addition, and in any event, it should be borne in mind that, according to the case-law, EUIPO is under no obligation to prove that the sign in respect of which registration is sought as an EU trade mark is included in dictionaries (see, to that effect, judgment of 14 December 2018, Dermatest v EUIPO (ORIGINAL excellent dermatest 5-star-guarantee.de CLINICALLY TESTED), T‑802/17, not published, EU:T:2018:971, paragraph 38 and the case-law cited).
46      Furthermore, contrary to what the applicant also submits, the fact that the expression ‘hands free fit’ has never been used in connection with footwear also does not prove that it is fanciful. In any event, that fact has no bearing on the legality of the contested decision. According to the case-law, it is not necessary that the signs and indications referred to in Article 7(1)(c) of Regulation 2017/1001 actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
47      As regards the applicant’s arguments based on the numerous registrations of signs similar to the sign applied for as EU trade marks, such as the EU trade mark EXACT FIT, 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).
48      As regards the arguments based on the registration of the sign applied for in the United Kingdom and the application for registration of that sign in 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).
49      It follows from the foregoing that the Board of Appeal rightly concluded that the mark applied for was descriptive of the goods at issue and was therefore caught by the ground for refusal set out in Article 7(1)(c) of Regulation 2017/1001.
50      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
51      The Board of Appeal found that the mark applied for, HANDS FREE FIT, conveyed promotional information highlighting positive aspects of the goods at issue, namely that they may be put on without the use of one’s hands and, accordingly, concluded that that mark was not capable of serving as an indication of the commercial origin of footwear. Consequently, it found that the mark applied for was devoid of any distinctive character.
52      The applicant submits that the contested decision is vitiated by an error of law in so far as the Board of Appeal misapplied the criteria for assessing the distinctive character of a trade mark.
53      EUIPO disputes the applicant’s arguments.
54      It is clear 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 in question not to be registrable as an EU trade mark (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29; see, also, judgment of 10 July 2024, duch puszczy, T‑473/23, not published, EU:T:2024:458, paragraph 73 and the case-law cited).
55      In the present case, since it has been established 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.
56      It follows from the foregoing that the second plea must be rejected as ineffective.
The third and fourth pleas in law, alleging breach of the principles of equal treatment and good administration
57      In support of its third 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, as summarised in its guidelines, without any reason to do so.
58      In addition, in support of its fourth 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 the flagrant breach of the principle of equal treatment.
59      EUIPO disputes the applicant’s arguments.
60      In that regard, it is worth recalling the case-law cited in paragraphs 47 and 48 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.
61      It 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).
62      As noted in paragraph 49 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.
63      In those circumstances, in the light of the case-law cited in paragraph 61 above, the Board of Appeal did not breach the principles of equal treatment and good administration in concluding that, despite the registration of the mark outside the European Union 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.
64      The third and fourth pleas must therefore be rejected as manifestly lacking any foundation in law.
65      It follows from all of the foregoing that the action must be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
66      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.
67      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.