On 26 February 2016, the General Court (provima Warenhandels GmbH v OHIM, T-543/14 “HOT SOX”) rejected an application for invalidity of an EU designation of an international registration for the trade mark HOT SOX for “hosiery” in Class 25. The court agreed with OHIM’s Board of Appeal that the mark was neither descriptive, nor non- distinctive, Articles 7(1)(c),(b) CTMR.

The court, in essence, agreed with OHIM’s Board of Appeal that even if the element “sox” was interpreted as a misspelling of the English word “socks”, the element “hot” in its literal understanding was undesirable when it was used for socks and not a characteristic of those goods. Thus the composite mark “HOT SOX” in the sense of “high temperature socks” was not descriptive or devoid of distinctive character for hosiery.

The invalidity applicant had argued that the obviously misspelt word "sox" would be understood as referring to socks and thus be seen as descriptive. However, the court found that the evidence which was submitted during the administrative proceedings showed that “the element ‘sox’ is used as a trade mark or trade name. In fact, nowhere in the evidence is the element ‘sox’ used in isolation, and it does not replace the word ‘socks’. Furthermore, in part of the evidence adduced, alongside the element ‘sox’ the word ‘socks is also used with correct spelling. It should also be added that the mere use of the element ‘sox’ does not mean that the public will perceive it descriptively.” The judges stressed that the mark as a whole had to be assessed to determine its descriptive character (citing CBp Carbon Industries v OHIM (CARBON GREEN), T‑294/10).

With regard to the alternative meanings of the word “hot”: “currently fashionable” and “erotic or sexy”, the Court again agreed with OHIM’s Board of Appeal which had held that these were neither non-distinctive, nor descriptive for “hosiery” when combined with the word ”sox”. In more detail the Court argued as follows:

Paragraph 7 “… clearly, as the Board of Appeal found, the adjective ‘hot’ in its meaning of ‘extremely warm’ or ‘very high temperature’ is not descriptive of the goods at issue, and in particular of socks, since it does not describe their characteristics. It should be noted that the applicant seeks, in essence, to portray the word ‘hot’ as a synonym of the word ‘warm’. However, those two words have very distinct meanings. Although the word ‘warm’, associated with ‘sox’, describes warm socks, that is clearly not the case of the word ‘hot’, which, meaning ‘extremely warm’ or ‘very high temperature’, describes neither a characteristic of socks nor their purpose. Socks are worn to keep feet warm or to warm them, but not to make them hot, which could happen if ‘hot socks’ were worn. As claimed by the intervener, the word ‘hot’ is not a positive or common characteristic designating temperature in the context of clothing. No consumer would wish to have socks which caused hot feet.”

Paragraph 43 “In the present case, nothing in the file before the Court gives grounds for assuming that English-speaking consumers in the European Union, when faced with the contested mark, will immediately perceive it, without any reflection, as meaning ‘fashionable socks’ or ‘currently popular socks’. It is therefore unlikely that the contested mark, taken as a whole, serves, in normal usage from the point of view of the relevant public, to designate ‘socks currently popular or in demand’..."

Paragraph 48: “As regards, third, the meaning of the word ‘hot’ as ‘erotic or sexy’, the applicant submits that the contested mark could also mean ‘sexy socks’. … it should be noted, as the Board of Appeal does .. ., that it is highly unlikely that the average consumer when faced with the contested mark interprets it as referring to ‘erotic or sexy socks’, since a pair of socks is not generally perceived as being sexually provocative.”

On balance, the Court took the view that the combination of the elements “HOT” and “SOX” was sufficiently distinctive to warrant protection as a registered trade mark for the Class 25 goods covered. The decision can be found here.

This blogpost was composed for Class 46 by Birgit Clark.