ORDER OF THE GENERAL COURT (Second Chamber)
7 April 2025 (*)
( EU trade mark – Application for EU word mark GO HANDS FREE – 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‑80/24,
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 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
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 13 December 2023 (Case R 1664/2023-4) (‘the contested decision’).
Background to the dispute
2        On 15 September 2022, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign GO HANDS FREE, 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 12 June 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 3 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 purely laudatory statement, 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 when 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 found, in paragraph 16 of the contested decision, that the relevant public was the general public, whose level of attention is average. Furthermore, it added, in paragraph 18 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, with regard to the goods at issue, as referring to switching to a version where one does not need to use one’s hands.
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 claims that the Board of Appeal failed to take into account the cognitive process required in order to understand the meaning of that sign. In that regard, it proposes an assessment of the meaning of that sign based on the understanding of negations, which requires an increased mental exercise. Lastly, it adds that the word ‘go’ is a very versatile word and that it could either refer, in a literal sense, to the action of moving, or be understood, in a figurative sense, as the act of transferring from one state to another. When combined with the expression ‘hands free’, those two possible meanings of the word ‘go’ have the effect of adding a ‘twist’ to the meaning of the sign applied for and, therefore, of making it more playful.
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 19 of the contested decision, the Board of Appeal endorsed the examiner’s finding that the English-speaking public would understand the expression ‘go hands free’ as a whole as having the meaning ‘switch to a version where one does not need to use one’s hands’. To that end, the Board of Appeal relied on dictionary definitions of the words making up the sign applied for. Accordingly, it stated that, in English, the word ‘go’ could be used to indicate that a person or thing changes to another state or condition, and that the expression ‘hands free’ could refer to a hands-free phone or other device which can be used without being held in one’s hand. In those circumstances, the Board of Appeal stated that it could be inferred from this that the relevant public would clearly perceive the expression ‘go hands free’ as a call to action to use the goods at issue which can be put on or removed without using one’s hands.
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      Furthermore, it should be noted that the applicant has not disputed, as such, the meanings of the words making up the sign applied for, taken from an English dictionary, which were used by the Board of Appeal, as set out in paragraph 22 above.
25      More specifically, as regards the word ‘go’, it should be noted that the applicant acknowledges that it can have several different meanings, and can refer to the action of moving and to the action of transferring from one state to another. The Board of Appeal adopted the latter meaning, but did not rule out the existence of other possible definitions of the word. In those circumstances, there are no grounds to call into question that definition of the word ‘go’ adopted by the Board of Appeal.
26      As regards the applicant’s arguments that the immediate image which is triggered in the mind of the relevant public when confronted with the expression ‘go hands free’ is that of a person walking on their hands, and that, furthermore, that expression constitutes a play on words, on account of the negation it contains, the following should be noted.
27      In the first place, as EUIPO correctly contends, the applicant has not provided any evidence in support of the assertion that the immediate image conveyed by the sign applied for is that of a person walking on their hands. The same is true of the applicant’s assertions that that image is reinforced by the juxtaposition of the words ‘go’ and ‘hands’ at the beginning of the slogan and by the absence of a hyphen between the words ‘hands’ and ‘free’, which are merely unsubstantiated claims.
28      Furthermore, 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 of the relevant public (see, to that effect, judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited). As pointed out in paragraph 22 above, the Board of Appeal, first, examined the different meanings of the words making up the sign applied for, according to the English dictionary, finding that the word ‘go’ was capable of evoking the action of changing state or condition, and that the expression ‘hands free’ referred to a hands-free phone or other device which can be used without being held in one’s hand. Secondly, it examined that sign in relation to the goods at issue, namely footwear. In those circumstances, the Board of Appeal was right to find that the expression ‘go hands free’ is capable of conveying, in English, an invitation to use footwear which can be put on or removed without using one’s hands.
29      By contrast, in the absence of any evidence supporting the applicant’s assertion, it cannot be held that the expression ‘go hands free’, in relation to footwear, is likely to be understood by the relevant public as referring to a person walking on their hands.
30      In the second place, as regards the applicant’s assertion that the expression ‘go hands free’ constitutes a play on words in that it contains a negation which conveys an image that must be reversed, it must be stated that there is no evidence to support such an assertion. From a grammatical point of view, the expression ‘go hands free’ appears to be an invitation or an order, owing to the use of the imperative form of the verb ‘to go’ in English (‘go’) followed by the expression ‘hands free’, which, grammatically, does not contain a negation either. In that regard and in any event, it must be pointed out that a play on words consists of a humorous use of a word or phrase which has several meanings or which resembles another word. In the present case, in so far as there is no humorous use or contradiction inherent in the message conveyed by the sign applied for, the Board of Appeal rightly concluded that that sign could be perceived as an invitation to use footwear that can be put on or removed without using one’s hands.
31      Furthermore, the example given by the applicant, based on the expression ‘don’t think of a blue elephant’, is clearly irrelevant for the purpose of supporting its argument. Since the expression ‘go hands free’ has no connection with the expression which the applicant proposed by way of example, a reasoning by analogy between the two expressions is neither useful nor relevant in the present case.
32      In the light of the foregoing, it must be held that the Board of Appeal correctly found that the expression ‘go hands free’ will be perceived immediately, without any interpretative effort, as an invitation to use footwear which can be put on or removed without using one’s hands.
The distinctive character of the mark applied for in respect of the goods at issue
33      The Board of Appeal endorsed the examiner’s findings relating to the existence of a link between the message conveyed by the sign applied for and the goods at issue. In essence, it found, in paragraphs 20 and 27 of the contested decision, that the examiner had correctly concluded, on the basis of the dictionary definitions of the words making up the sign applied for, that the expression ‘go hands free’ would be understood by the relevant public as a call to action inciting them to use the goods at issue by putting them on or removing them without using their hands. Furthermore, in paragraphs 21 to 23 of the contested decision, the Board of Appeal referred to examples taken from various websites, on which the examiner had relied, in order to validate the examiner’s conclusion that the expression ‘hands free’ was already used in the marketing of footwear to highlight that being able to put on and remove footwear without using one’s hands is a desirable characteristic of those goods. Consequently, the Board of Appeal concluded, in paragraphs 24 to 29 of the contested decision, 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.
34      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.
35      EUIPO disputes the applicant’s arguments.
36      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).
37      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).
38      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 that 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).
39      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.
40      First, 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, in so far as the expression ‘go hands free’ would be perceived as an imaginative, surprising or unexpected play on words. In that regard, it must be recalled that, as stated in paragraph 22 above, the Board of Appeal was right to find that the sign applied for would clearly convey to the relevant public a call to action to use the goods at issue which can be put on or removed without using one’s hands. In so far as the expression ‘go hands free’ consists of words which appear in an English dictionary and follows the grammatical rules of that language, and in so far as it is capable of conveying to the relevant public a clear message relating to a desirable characteristic of the goods at issue, it cannot be regarded as being an imaginative, surprising or unexpected play on words, the meanings proposed by the applicant in that regard not being immediately plausible or perceptible by the relevant public, as pointed out in paragraphs 29 to 31 above.
41      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 28 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.
42      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 38 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 trade as a promotional formula.
43      In any event, the Board of Appeal correctly endorsed the assessments of the examiner by holding that, in the context of footwear, the mark applied for would be understood to refer to the use of the goods at issue by putting them on or removing them without using one’s hands. By way of illustration, the Board of Appeal relied, inter alia, on the examiner’s findings based on screenshots – taken from several websites of shoe vendors, including the applicant – which demonstrated the expression ‘hands free’ being used in connection with footwear. Accordingly, the applicant’s criticism based on the conclusions drawn from those screenshots cannot succeed since, as is apparent from paragraph 33 above, the Board of Appeal relied on the dictionary definitions of the words making up the sign applied for in order to conclude that the mark applied for lacks distinctive character, and used those screenshots to illustrate the existence of a connection between the expression ‘hands free’ and the goods at issue and, therefore, to reinforce that conclusion.
44      It follows that the Board of Appeal was right to find that the expression ‘go hands free’, used for footwear, would be perceived by English-speaking consumers in the European Union as a simple promotional slogan highlighting the fact that the goods at issue may be put on or removed without using one’s hands, which saves time, enables freedom of movement and is helpful to anyone in need of assistance. Thus, 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.
45      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 administrative 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).
46      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).
47      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.
48      It follows from the foregoing that the Board of Appeal was justified in finding that the mark applied for was devoid of any distinctive character.
49      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
50      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.
51      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.
52      EUIPO disputes the applicant’s arguments.
53      It is important to note that, in accordance with the case-law cited in paragraph 45 above, the decision of EUIPO in the present case was adopted in the exercise of circumscribed powers and 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.
54      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 46 above, the examination of an application for registration must be undertaken in each individual case.
55      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).
56      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).
57      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.
58      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 21 to 32 above, that the sign applied for in the present case does not convey an 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 48 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.
59      The second and third pleas in law must therefore be rejected as manifestly lacking any foundation in law.
60      It follows from all of the foregoing that the action must be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
61      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.
62      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.