CABINET CHAILLOT
PATENTS TRADEMARKS DESIGNS
French Patent & Trademark Attorneys - European Patent Attorneys - Representatives before EUIPO
ISO 9001 CERTIFIED
EU trademark XOXO was filed in classes 3, 9, 14, 18, 25 and 35.
Following observations from third parties, it was refused for all goods because the sign XOXO, symbol of ‘hughs and kisses’, will be perceived as a promotional message conveying feelings of love and affection with regard to goods that are capable of being offered as gifts.
Trademark was accepted for retail services of class 35 such as « Retail services connected with the sale of fragrances, body cleaning and beauty care preparation… ». This was confirmed by Boards of Appeal and the General Court (T-503/19 of 13/05/2020).
An opposition based on prior trademark OXXO was also filed. OXXO is registered in class 35 for reatil services connected with the sale of clothing.
The opposition Division rejected opposition :
- even if the signs comprise the same letters O and X, their specific order is decisive in their overall impressions : the signs are visually and aurally similar to a low degree
- conceptually, the element ‘OXXO’ of the earlier mark has no meaning for the relevant public. In contrast, the contested sign ‘XOXO’ has a meaning ‘hugs and kisses’. Since one of the signs will not be associated with any meaning, the signs are conceptually not similar.
The Board of Appeal, when considering the meaning of the application XOXO, recalls that the very purpose of slogans is to persuade potential customers to buy the goods or services of the enterprise in question. A slogan that is banal, commonplace or directly referring to characteristics of the relevant goods or services is unlikely to possess any distinctive character because it will probably not be perceived immediately as an indication of the commercial origin of the goods or services in question. No undertaking should be given a monopoly right to use banal, commonplace or everyday terms to promote its commercial activities.
Where a decision of the Opposition Division is subject to an appeal, and the Board of Appeal considers that an absolute ground for refusal may apply to some or all of the goods or services, the Board may suspend the appeal proceedings and remit the contested application to the examiner with a recommendation to reopen the examination of absolute grounds for refusal.
The examiner will have to consider if XOXO, which has been refused as being not distinctive for designating goods that are capable of being offered as gifts, is also not distinctive for designating the retail services of these goods.
