Nike Innovate v EUIPO (SUPPORT-FIT) (EU trade mark - Judgment) [2024] EUECJ T-1072/23 (23 October 2024)

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( EU trade mark - Application for the EU word mark SUPPORT-FIT - Absolute grounds for refusal - Descriptive character - Article 7(1)(b) and (c) of Regulation (EU) 2017/1001 )

Nike Innovate CV, established in Beaverton, Oregon (United States), represented by J.-C. Rebling, lawyer,

European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann, acting as Agent,

composed of K. Kowalik-Bańczyk, President, G. Hesse and B. Ricziová (Rapporteur), Judges,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 By its action under Article 263 TFEU, the applicant, Nike Innovate CV, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 September 2023 (Case R 915/2023-4) (‘the contested decision’).

2 On 12 July 2022, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign SUPPORT-FIT.

3 The mark applied for covers 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; Clothing; Headgear’.

4 By decision of 20 March 2023, the examiner rejected the application for the registration of that mark in respect of all the goods referred to in paragraph 3 above, other than goods falling under the category ‘headgear’, on the basis of Article 7(1)(b) and (c), read in conjunction with Article 7(2) of 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).

5 On 2 May 2023, the applicant lodged an appeal with EUIPO against the examiner’s decision.

6 On that same date, the applicant filed an application to restrict the list of goods covered by the mark applied for, which was upheld by the Board of Appeal. After restriction, those goods, falling under Class 25, were the following: ‘Athletic footwear; sneakers; casual footwear; leggings; shorts; shirts; sweatshirts; sweatpants; tank-tops; track suits; sports bras; socks; wristbands; athletic tights; athletic apparel; athletic uniforms; headbands; headwear; hats; caps; visors; sweatbands’.

7 By the contested decision, the Board of Appeal dismissed the appeal. First, it excluded the following goods from the scope of the appeal: ‘headbands; headwear; hats; caps; visors’ which were included in the broad category of ‘headgear’ in Class 25, already accepted by the examiner. The Boards of Appeal, second, found that the mark applied for would be perceived, for the goods at issue, as referring to a garment that fits and supports a specific part of the body and that there is a sufficiently direct and specific link, between that mark and those goods, to enable the relevant public to immediately perceive, without further reflection, a description of those goods or one of their characteristics. Finally, it concluded that the mark applied for was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001 and, accordingly, also devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

- order the applicant to pay the costs in the event that an oral hearing is convened.

10 The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001, and second, infringement of Article 7(1)(b) of that regulation.

First plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001

11 The applicant alleges infringement by the Board of Appeal of Article 7(1)(c) of Regulation 2017/1001, in so far as the Board of Appeal wrongly held that the mark applied for was descriptive of the goods covered by the application for registration.

12 Article 7(1)(c) of Regulation 2017/1001 provides that 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, must not be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability exist in only part of the European Union.

13 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 (judgment of 28 April 2021, Freistaat Bayern v EUIPO (GEWÜRZSOMMELIER), T-348/20, not published, EU:T:2021:228, paragraph 19).

14 By prohibiting the registration as trade marks of such signs and indications, Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23 October 2003, OHIM v Wrigley, C-191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).

15 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 link between the sign and the goods or services in question to enable the relevant public to perceive, immediately and without further thought, a description of such goods or services or of 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).

16 The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant public, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant public as a description of one of those characteristics (see 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 24 and the case-law cited).

17 Furthermore, although it is irrelevant whether such a characteristic is commercially essential or ancillary, a characteristic, within the meaning of Article 7(1)(c) of Regulation 2017/1001, must nevertheless be objective and inherent to the nature of the product or service and intrinsic and permanent with regard to that product or service (judgment of 21 February 2024, AMAZONIAN GIN COMPANY, T-756/22, not published, EU:T:2024:101, paragraph 25).

18 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 persons have of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T-379/03, not published, EU:T:2005:373, paragraph 37 and the case-law cited).

20 In the first place, as regards the definition of the relevant public, the Board of Appeal found, in paragraphs 22 and 23 of the contested decision, first, that the relevant public primarily consisted of the public at large, whose level of attention was essentially considered to be average. Second, it clarified that, the mark applied for being composed of English words, the assessment of the distinctive character of that mark had to be carried out with regard to the English-speaking public of the European Union, namely that of Ireland and Malta, as well as the public of other Member States where the understanding of English is widespread, such as in Denmark, Cyprus, the Netherlands, Finland and Sweden.

22 In the second place, as regards the understanding of the mark applied for by the relevant public, the Board of Appeal found, in paragraphs 25 and 26 of the contested decision, that, first, the term ‘support’ ‘designat[ed] items worn or applied to part of the body for support’ and the term ‘fit’ referred to ‘a garment that fits’. Second, it noted that the combination, within that mark, of those two separate terms by a hyphen would be perceived by the relevant public as referring to ‘a garment that fits and supports a specific part of the body’.

23 Although the applicant asserts that the meaning of the mark applied for in its entirety, as found by the Board of Appeal, is incorrect, it does not put forward any specific and substantiated argument seeking directly to call into question the Board of Appeal’s assessments set out in paragraph 22 above. While it is true that the applicant submits that the mark SUPPORT-FIT is an invented term, that the expression ‘support fit’ or ‘support-fit’ does not exist as such and is grammatically incorrect and that that expression requires a certain interpretation to derive any meaning from it, the applicant does so in arguments concerning the examination of the link between the meaning of the mark applied for and the goods at issue to assess whether that mark is descriptive. Those arguments will be assessed below.

24 In the third place, as regards the link between the mark applied for and the goods at issue, examined in paragraphs 25 to 35 of the contested decision, the Board of Appeal found, first, that the meaning of the expression ‘support-fit’ was descriptive of the goods in question, which included, inter alia, sporting goods and were intended to fit different parts of the body to offer greater comfort. In that regard, the Board of Appeal clarified, inter alia, that all the goods at issue were explicitly or implicitly goods which could be worn for the purpose of athletics, sports, exercise and (ath)leisure, for which a good fit offering support is a marketable characteristic. It stated that the individual elements ‘support’ and ‘fit’ of the mark applied for were descriptive of the inherent and intrinsic characteristics of the goods in question.

25 Second, the Board of Appeal found that it is of little importance, in the context of the assessment of the descriptive character of a sign, whether the characteristics of goods which may be the subject of the description were commercially essential or merely ancillary.

26 Third, the Board of Appeal also found that the fact that the expression ‘support-fit’ is not found in a dictionary or in a commercial context does not mean that it would not be perceived as a characteristic of the goods at issue. According to the Board of Appeal, the combination of the terms ‘support’ and ‘fit’, which were each descriptive of the goods at issue, was not fanciful, even if it could be accepted that it was grammatically incorrect. In addition, the mark applied for constitutes the exact sum of its parts and possesses no further feature capable of conferring distinctiveness. Thus, according to the Board of Appeal, the mark applied for conveys direct and specific information about the characteristics of the goods at issue, which would be perceived without any interpretative effort.

27 The Board of Appeal therefore concluded that there was a sufficiently direct and specific link between the mark applied for and the goods at issue to enable the relevant public to perceive immediately, and without further thought, a description of those goods or of one of their characteristics.

29 First, the Board of Appeal did not correctly assess what constitutes a relevant characteristic of the goods at issue, as the mark applied for provided no direct indication as to the nature of a characteristic of the goods at issue. According to the applicant, there is no direct and immediate link between the expression ‘support-fit’ and the goods at issue.

30 Second, the applicant also claims that the mark SUPPORT-FIT is an invented term and that the expression ‘support fit’ or ‘support-fit’ does not exist as such, is not used in the market for the goods at issue, is not found in a dictionary and is grammatically incorrect. That expression therefore requires an interpretative effort to derive any meaning in relation to those goods.

31 Third, the applicant submits that the Board of Appeal also wrongly dismissed its arguments concerning the registration of certain earlier marks, which should have led the Board of Appeal, in essence, to find the absence of descriptive character of the mark applied for in relation to the goods at issue.

33 First, in the present case, it should be noted that the goods at issue are footwear, sportswear and leisurewear and, as stated in paragraph 22 above, that the mark applied for is understood by the relevant public as referring to an article of clothing that fits and supports a specific part of the body. Although the applicant contests the assessment of the relevant characteristic of the goods at issue, it must be noted that the fact that an adjustable garment or shoe offers support during sporting or leisure activities is an essential characteristic of those goods (see, by analogy, judgment of 21 September 2011, Nike International v OHIM (DYNAMIC SUPPORT), T-512/10, not published, EU:T:2011:511, paragraph 25). The support that those goods can provide relates to their practical purpose. Similarly, as was noted by the Board of Appeal in paragraphs 27 and 30 of the contested decision, items such as the goods at issue, which are a good fit, have an aesthetic appeal which is a commercial characteristic of those goods. That mark therefore conveys direct and specific information on the objective and intrinsic characteristics of the goods at issue, which will be perceived without any interpretive effort.

34 Second, the fact that the expression ‘support-fit’ in the mark applied for is a combination of two terms which, according to the applicant, is invented and grammatically incorrect will not prevent the relevant public from perceiving a description of the goods at issue. It should be noted that, according to settled case-law, a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation 2017/1001, unless there is a perceptible difference between that neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that regard, analysis of the term at issue in the light of the appropriate lexical and grammatical rules is also relevant (see judgment of 13 July 2022, dennree v EUIPO (BioMarkt), T-641/21, not published, EU:T:2022:446, paragraph 30 and the case-law cited).

35 In the present case, the expression ‘support-fit’, taken in its entirety, is a simple combination of two English terms, which will be easily understood by the relevant public. Contrary to what the applicant seems to suggest, it is not an expression likely to create an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements ‘support’ and ‘fit’ of which it is composed, in accordance with the case-law cited in paragraph 34 above. It must therefore be held, contrary to the applicant’s assertion, that the combination of those two descriptive elements is not fanciful. The mark applied for constitutes the exact sum of its parts, possessing no further characteristic capable of conferring distinctiveness.

36 Thus, the Board of Appeal was correct to find that the mark applied for would be immediately perceived, and without further thought, as a description of the goods at issue, there being a sufficiently direct and specific link existing between the requested sign and the goods at issue.

37 Third, that finding as to the descriptive character of the mark applied for in relation to the goods at issue is not invalidated by the applicant’s argument according to which the Board of Appeal should have taken into account, in the context of its assessment, earlier similar signs which were registered.

38 In that regard, it must be recalled that, according to settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called on 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 those decisions must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on that of previous EUIPO decision-making practice (judgments of 12 March 2019, Novartis v EUIPO (SMARTSURFACE), T-463/18, not published, EU:T:2019:152, paragraph 54, and of 11 October 2023, Biogena v EUIPO (THE GOOD GUMS), T-87/23, not published, EU:T:2023:617, paragraph 45).

39 Moreover, for reasons of legal certainty and sound 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 trade mark of the European Union 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 (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraph 77).

40 In the present case, as follows from the above, the Board of Appeal was correct in finding that the mark applied for fell within the scope of the ground for absolute refusal provided for in Article 7(1)(c) of Regulation 2017/1001, with the result that the applicant cannot successfully rely on EUIPO’s previous decisions in order to invalidate that conclusion.

Second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001

42 The applicant claims that the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001, arguing, in particular, that the Board of Appeal incorrectly found that the mark applied for lacked distinctive character within the meaning of that provision solely on the basis of the conclusion that that mark possessed a descriptive character for the purposes of Article 7(1)(c) of that regulation.

44 In that regard, it must be borne in mind that, as is apparent from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign not to be registrable as an EU trade mark (see, to that effect, judgment of 19 September 2002, DKV v OHIM, C-104/00 P, EU:C:2002:506, paragraph 29).

45 Accordingly, since, as is apparent from the examination of the first plea in law, the requested sign is descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001 and that ground is in itself sufficient to justify the refusal of registration, there is no need, in the present case, to examine the validity of the plea in law alleging infringement of Article 7(1)(b) of that regulation (see judgment of 6 December 2023, DGC Switzerland v EUIPO (cyberscan), T-85/23, not published, EU:T:2023:784, paragraph 66 and the case-law cited).

46 It follows from the foregoing that the action must be dismissed in its entirety.

47 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party shall be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

48 Although the applicant has been unsuccessful in the present case, EUIPO has applied for costs to be awarded against it only in the event that a hearing is held. Since no hearing was held, it is appropriate to decide to order each party to bear its own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Nike Innovate v EUIPO (SUPPORT-FIT) (EU trade mark - Judgment) [2024] EUECJ T-1072/23 (23 October 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T107223.html Cite as: [2024] EUECJ T-1072/23, EU:T:2024:729, ECLI:EU:T:2024:729

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