Skechers USA v EUIPO (ARCH FIT) (EU trade mark - Judgment) [2021] EUECJ T-598/20 (21 December 2021)

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

Skechers USA, Inc. II, established in Manhattan Beach, California (United States), represented by T. Holman and A. Reid, Solicitors, and J. Bogatz and Y. Stone, lawyers,

European Union Intellectual Property Office (EUIPO), represented by S. Scardocchia and V. Ruzek, acting as Agents,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 29 July 2020 (Case R 2631/2019-1), relating to an application for registration of the word sign ARCH FIT as an EU trade mark,

composed of V. Tomljenović (Rapporteur), President, P. Škvařilová-Pelzl and I. Nõmm, Judges,

having regard to the application lodged at the Court Registry on 29 September 2020,

1 On 3 June 2019, the applicant, Skechers USA, Inc. II, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) 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 goods in respect of which registration was sought are 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, and correspond to the following description: ‘Footwear’.

4 By decision of 26 September 2019, the examiner rejected the trade mark application on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) thereof.

5 On 20 November 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.

6 By decision of 29 July 2020 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, on the ground that the mark applied for was descriptive of the goods referred to in paragraph 3 above and devoid of distinctive character.

7 More specifically, first, it held, in essence, that, having regard to the goods in question, the relevant public was made up of the English-speaking general public in the European Union. Secondly, following an analysis of the meaning of the English words ‘arch’ and ‘fit’, with regard to the goods in question, it observed that, under Article 7(1)(c) of Regulation 2017/1001, the mark applied for described a ‘clearly recognisable characteristic of the goods offered’ for the relevant public. More specifically, when a consumer is confronted with the word sign ARCH FIT, he or she will understand, effortlessly and immediately, that the footwear in question is designed specifically to fit the wearer’s foot arch. Thirdly, the Board of Appeal found that the trade mark applied for was equally and necessarily devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001. Moreover, there is nothing fanciful, arbitrary or thought-provoking in the expression ‘arch fit’ with respect to the goods in question. Fourthly, the Board of Appeal considered that the applicant’s reliance on several registrations of earlier EU marks and earlier international registrations designating the European Union was not capable of calling into question the lawfulness of the refusal to register the mark applied for. According to the Board of Appeal, decisions adopted at first instance by EUIPO cannot bind the Board of Appeal or the EU judicature. In addition, none of the examples relied on by the applicant related to a mark identical to the mark which was the subject matter of the proceedings before it. In any event, there was no manifest contradiction between the outcome of the contested decision and the approach adopted in respect of the earlier registrations relied on by the applicant. The Board of Appeal stated that the applicant’s reference to the existence of a registration of the mark ARCH FIT in the United States is irrelevant, given that the EU trade mark regime is an autonomous system.

10 In support of the present action, the applicant relies on two pleas in law: (i) infringement of Article 7(1)(c) of Regulation 2017/1001 and (ii) 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 argues that, by holding that the mark applied for was descriptive, the Board of Appeal erred in law. According to the applicant, the Board of Appeal incorrectly applied the requirements relating to the assessment of the descriptive character of a mark to the present case.

12 Thus, the applicant submits that, in the first place, the Board of Appeal incorrectly found that, as regards the expression ‘arch fit’, one meaning alone would naturally come to the relevant public’s mind. The term ‘arch’ does not call to mind automatically the arch of a human foot. The same reasoning applies to the word ‘fit’.

13 In the second place, the applicant submits that, inasmuch as footwear is often used for physical exercise, it is incomprehensible that the Board of Appeal ruled out, in the contested decision, the possibility that the term ‘fit’ could be understood as referring to physical fitness. The mark ARCH FIT could just as easily imply that the footwear it designates would facilitate running or other physical exercises, or that wearing that footwear would have an effect on the strength of the arch of the foot. According to the applicant, all of those options were disregarded incorrectly by the Board of Appeal.

14 In the third place, when the Board of Appeal observed that the expression ‘arch fit’, taken as a whole, is ‘neither syntactically incorrect, nor conceptually unexpected’ (see paragraph 30 of the contested decision), it failed to have regard to the fact that, even if a sign is grammatically correct, this does not mean that it will be understood immediately as related to the goods and services in question. In fact, even a grammatically correct statement without any syntactical peculiarities is not necessarily descriptive.

15 In the fourth place, the applicant observes that the Board of Appeal erred in considering, also in paragraph 30 of the contested decision, that the expressions ‘slim fit’ and ‘loose fit’, used commonly for clothing and similar to the expression ‘arch fit’, confirm the descriptive character of the mark applied for. The use of the expressions ‘slim fit’ and ‘loose fit’ is rare and unusual for footwear. Consequently, the Board of Appeal’s assertion in paragraph 31 of the contested decision that the meaning attributed to the sign ARCH FIT for shoes ‘comes all the more effortlessly to … mind’ is also unfounded.

16 In the fifth place, the applicant claims that the Board of Appeal found incorrectly that the relevant public would establish immediately a direct and specific link between the sign ARCH FIT and certain characteristics of the footwear.

17 First, it is incorrect, according to the applicant, to consider that the relevant public has a specific need for footwear fitting the arch of the foot. If such a need did in fact exist, more companies would advertise that characteristic.

18 Second, the applicant submits that the relevant public does not use the expression ‘arch fit’ to describe footwear. There is no one specific arch that footwear must fit. The arch of an individual’s foot could be either average, flat or high, and therefore there is no ‘perfect match’ for everyone, nor an ‘arch fit’ per se. That expression therefore requires some interpretation in order to determine its meaning.

19 Third, the applicant observes that the intention to discern, in the present case, a direct and specific link between the mark applied for and the goods in question is contrary to the Court’s case-law. It follows, in essence, from the judgments of 7 May 2019, Fissler v EUIPO (vita) (T‑423/18, EU:T:2019:291), and of 25 June 2020, Off-White v EUIPO (OFF-WHITE) (T‑133/19, not published, EU:T:2020:293), that the mere fact that footwear is available in a certain colour (white and ‘off-white’, respectively) does not mean that that colour will actually be perceived by the relevant public as an intrinsic characteristic which is inherent to the nature of those goods. If the Board of Appeal had applied that reasoning to the mark applied for, it should have found that the mere fact that footwear might fit the arch of the foot of certain consumers did not constitute a general characteristic of that product for all of the relevant public and could not have asserted that there was a direct and immediate link between the expression ‘arch fit’ and the footwear.

20 In the sixth place, the applicant submits that the Board of Appeal, in paragraph 40 of the contested decision, incorrectly rejected as unfounded the applicant’s argument that the sign applied for ‘[was] unclear, fanciful or more than the sum of its parts’. The expression ‘arch fit’ does not exist per se. This is illustrated by the fact that the expression is used only by the applicant and cannot be found in any dictionary. Admittedly, it is not necessary for an expression to be found in a dictionary for it to be regarded as descriptive, but the fact that it is not suggests strongly that it is not descriptive.

21 In the seventh place, the Board of Appeal’s finding that registrations of other marks containing the words ‘arch’ or ‘fit’ relating to goods in Class 25 cannot have any bearing on ‘the registrability of the mark applied for’, as the circumstances of the present case are different (see paragraph 57 et seq. of the contested decision), is, according to the applicant, incorrect. The applicant observes in that context that, after a temporary refusal, the EU word mark EXACT FIT was accepted by EUIPO for footwear on the ground that that mark was distinctive in respect of goods in Classes 18 and 25 inasmuch as there is no ‘universally fixed size that every item has to match’. That reasoning is also applicable to the present case. Moreover, the applicant submits that, in paragraph 57 of the contested decision, the Board of Appeal erred again in stating that none of the examples of marks cited by the applicant before EUIPO related to a mark identical to the one in the present action and that the goods at issue were not comparable. For the same legal principles to apply to the mark applied for, the applicant argues that it is not necessary that the earlier marks are identical to the mark at issue – it is sufficient that the marks are comparable.

22 In the eighth place, the applicant submits that the mark applied for does not differ from other marks the registration of which was accepted by the Court, on the ground that those marks were not descriptive or were even distinctive. In that connection, it refers to several judgments delivered by the Court.

23 In the ninth place, given the Board of Appeal’s failure to have regard to EUIPO’s decision-making practice and the case-law of the EU judicature, the applicant submits that the Court should find that the rejection of the registration of the contested mark infringes not only Article 7(1)(c) of Regulation 2017/1001 but also breaches the principle of equal treatment.

25 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. According to Article 7(2) of that regulation, paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

26 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).

27 According to case-law, signs and indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation 2017/1001, deemed incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service designated by the mark, thus enabling the consumer who acquires the goods or service to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 13).

28 It follows that, 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 immediately to perceive, without further thought, a description of those goods or services or of one of their characteristics (see judgment of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 14 and the case-law cited). Furthermore, it is sufficient for EUIPO to refuse registration of a mark under Article 7(1)(c) of Regulation 2017/1001 if at least one of the possible meanings of the sign in question 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).

29 Last, it must be borne in mind that a sign’s descriptiveness can only be assessed, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 17).

30 The arguments of the parties relating to the assessment set out by the Board of Appeal in the contested decision must be examined in the light of those principles.

31 Regarding the relevant public’s perception of the sign sought to be registered as an EU mark, the Board of Appeal found, in paragraph 15 of the contested decision, that, bearing in mind the nature of the goods at issue and the fact that the sign consisted of English-language terms, the relevant public consisted, in essence, of the English-speaking general public in the European Union, whose level of attention is average when purchasing the goods in question, namely footwear.

32 That definition of the relevant public is not disputed by the applicant and must be confirmed on the same grounds as those set out in the contested decision.

33 Pursuant to Article 7(2) of Regulation 2017/1001, it is sufficient that an absolute ground for refusal exists in part of the European Union for registration of a mark applied for to be refused. Therefore, it is sufficient, in the present case, that the mark applied for is descriptive of the goods concerned or some of their characteristics for the relevant public, that is, the English-speaking general public living, for example, in Ireland or Malta, for its registration to be refused.

34 As previously noted in paragraph 6 above, the Board of Appeal held that the mark applied for was descriptive of the goods in question, namely footwear. In that regard, it stated, in essence, in paragraph 24 of the contested decision that, while it is true that the English word ‘arch’ can, admittedly, refer to various concepts, such as a type of construction or structure in the building sector, when used for footwear, the meaning that will come to mind naturally for the relevant public is a clear reference to the arch of the human foot. Next, in paragraph 25 of the contested decision, the Board of Appeal set out, in essence, that, although the word ‘fit’ may have various meanings depending on the context and designate, in particular, a person who is healthy due to exercise – when the sign was used for footwear, which is intended to fit properly the foot of the person who wears it in order to provide adequate support and comfort, the meaning that will come to mind naturally for the relevant public is a clear reference to footwear of the correct size or shape for its wearer. Having regard to those factors, the Board of Appeal found, in paragraphs 32, 34 and 37 of the contested decision, that the sign ARCH FIT will be understood immediately by the relevant public as a direct reference to a ‘characteristic’ of the footwear which is particularly important for the relevant public, namely ‘that the footwear fits the wearer’s arch’. The mark therefore describes directly, for the relevant public, a ‘clearly recognisable characteristic of the goods [at issue]’.

36 It should be borne in mind at the outset that the term ‘characteristic’, referred to by the Board of Appeal in the contested decision, covers a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court of Justice has previously pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation 2017/1001 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50).

37 Next, it is sufficient, in order to refuse the registration of a mark, that in the perception of the relevant public it be able to be used for the purposes of designating an actual or potential characteristic of the goods referred to, even if that characteristic does not yet pertain at the current stage of technology. That possibility must be assessed by reference to the perception of the relevant public and not according to the findings of scientific experts (judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 22).

38 Last, 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 that product or service and intrinsic and permanent with regard to that product or service (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 44 and the case-law cited).

39 In the present case, in the first place, in the context of footwear, the average consumer, who is reasonably well informed and reasonably circumspect, in the relevant public, namely the English-speaking general public, will perceive the element ‘arch’ as relating to the ‘raised part of the foot formed by a curved section of bones’. That meaning is one of the basic – that is to say, not remote or nuanced – meanings of that word, as is apparent from the online dictionary for English learners that can be consulted at the following address: https://www.oxfordlearnersdictionaries.com. When confronted with the word ‘arch’ designating footwear, the English-speaking general public will not engage in an analysis for the purpose of verifying, on its part, whether other meanings of the word ‘arch’ could also be chosen. In connection with footwear, that public will not hesitate to associate that word with the human foot.

40 As for the element ‘fit’, the English-speaking general public will understand it as a verb referring directly to the meaning of the terms ‘be the right shape and size for somebody/something’, in accordance with one of the first meanings of that verb set out in the online dictionary referred to in paragraph 39 above. This is a common and obvious meaning that will come to mind naturally and without further thought for the relevant public. The element ‘fit’ could also be perceived by the relevant public as a common noun referring, in the circumstances of the present case, to the meaning of the terms set out in the online dictionary referred to in paragraph 39 above, the ‘way that two things match each other or are suitable for each other’, such as in the expression ‘a perfect fit’. The average consumer, who is reasonably well informed and reasonably circumspect and part of the English-speaking general public will rule out any other meaning of the element ‘fit’ in the circumstances of the present case. More specifically, he or she will not think of the meaning that ‘fit’ has in, for example, the expressions ‘a fit of laughter’ or ‘epileptic fit’.

41 Without there being any need to ascertain whether, in the mark applied for, the word ‘fit’ will be perceived as a verb or a common noun, it must be stated that, as the Board of Appeal stated correctly in paragraphs 32, 34 and 37 of the contested decision, the combination of the words ‘arch’ and ‘fit’ will be understood by the English-speaking general public as an indication that the footwear designated by the mark applied for is designed specifically to fit the arch of the user’s foot.

42 The fact that the footwear fits or must fit the foot, the raised part of the human foot called ‘the arch’ in particular, must be regarded as the description of one of the characteristics which is objective and inherent to the nature of those goods and intrinsic and permanent with regard to those goods, within the meaning of the case-law cited in paragraphs 36 to 38 above.

43 In the second place, it must be borne in mind that, according to case-law, if a mark which consists of a word produced by a combination of elements is to be regarded as descriptive, it is not sufficient that each of its components may be found to be descriptive. The word itself must be found to be descriptive (judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 96). This applies mutatis mutandis to an expression which is merely a combination of word elements. Moreover, it must be borne in mind that, as a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned (judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 98).

44 In the present case, not only are the terms ‘arch’ and ‘fit’ capable, in themselves, of communicating a descriptive message relating to footwear, but so is their combined use. Taken as a whole, the grammatical structure of the expression ‘arch fit’ is not so unusual as to lead to a finding that it modifies the message communicated by each of those elements by itself in the context of footwear.

45 In the third and last place, it must be found that, in the present case, the link between the mark applied for and the goods in question, namely footwear, is sufficiently direct and specific, within the meaning of the case-law cited in paragraph 28 above, for the relevant public immediately to perceive, without any particular mental effort, that mark as the description of one of the characteristics of those goods. For the English-speaking general public, the message communicated by ‘arch fit’ in connection with footwear will be unambiguous, as the words comprising that expression will be understood in accordance with one of their basic meanings and that expression does not contain any grammatical or semantic peculiarities likely to modify those basic meanings.

46 Having regard to the foregoing considerations, the Court holds that the Board of Appeal was fully entitled to find, in the contested decision, that the sign ARCH FIT was descriptive of the goods in question.

47 None of the arguments relied on by the applicant in support of its action is capable of calling into question that finding.

48 In the first place, it is appropriate to reject as unfounded the applicant’s argument that the Board of Appeal failed to have regard to the fact that a grammatically correct statement is not necessarily descriptive (see paragraph 14 above).

49 It is not apparent from the contested decision that the Board of Appeal failed to have regard to such a fact. It is true that, in paragraph 30 thereof, the Board of Appeal stated that ‘the expression ‘ARCH FIT’, as a whole, [was] neither syntactically incorrect, nor conceptually unexpected’. In doing so, it answered the question whether the sign ARCH FIT could be understood immediately by the relevant public as an expression describing certain characteristics of the footwear or whether it contained grammatical inaccuracies or conceptual peculiarities such that it could not be regarded as descriptive (see paragraph 44 above).

50 The fact that a statement is grammatically correct does not lead to the inference that it is descriptive of the goods in question, and the Board of Appeal refrained from making such an inference in the contested decision. Thus, the argument that the applicant intends to base on the Board of Appeal’s finding that the expression ‘arch fit’ comprising the mark applied for is correct grammatically is not connected directly with that board’s assessment in the contested decision, so that it must be rejected as ineffective and, in any event, unfounded.

51 In the second place, it is also appropriate to reject as unfounded the applicant’s argument that, in essence, the finding that the meaning of the sign ARCH FIT in connection with shoes ‘[came] all the more effortlessly to … mind’ since it was similar to the expressions ‘slim fit’ and ‘loose fit’, commonly used for clothing (see paragraph 15 above), is incorrect.

52 In that regard, it must be noted that, in paragraph 30 of the contested decision, the Board of Appeal stated that ‘the structure of the sign “Arch Fit”, is by no means unnatural or uncommon, when it comes to refer to items intended to cover the human body’ and that ‘the structure of the sign is similar to expressions, such as “slim fit” or “loose fit”, commonly used for clothing’. On the basis of those statements, the Board of Appeal came to the conclusion, in paragraph 31 of that decision, that ‘the meaning of the sign ARCH FIT for footwear, comes all the more effortlessly to the mind, since consumers are accustomed to similar expressions commonly used for other items intended to cover the body’.

53 In its reasoning, the Board of Appeal extrapolated the meaning of the expressions ‘slim fit’ and ‘loose fit’, as used for clothing, and, therefore, the descriptive character of those expressions for clothing, to the meaning that the expression ‘arch fit’ could have for footwear, given that the starting point for such an extrapolation was the fact that both clothing and footwear are ‘items intended to cover the body’.

54 The applicant does not show in what way the reasoning in paragraphs 30 and 31 of the contested decision, which obviously flows from the assertion that clothing and footwear are subcategories of the more general category of ‘items intended to cover the body’, is inaccurate. It limits itself to noting that the expressions ‘slim fit’ and ‘loose fit’ are rather uncommon for footwear (see paragraph 22 of the application). However, the Board of Appeal did not in any way state its position, in the context of its extrapolation in the contested decision, on the common or uncommon nature of the expressions ‘slim fit’ and ‘loose fit’ as regards footwear. It follows that the present argument must be rejected as ineffective.

55 In the third place, the applicant’s arguments alleging, in essence, that there is no direct and specific link between the sign ARCH FIT and footwear (see paragraphs 16 to 19 below) must be rejected as unfounded. As has previously been set out in paragraph 45 above, the sign ARCH FIT, taken as a whole, has, from the point of view of the relevant public, a sufficiently direct and specific link with one of the characteristics of the goods in question.

56 First, the applicant cannot claim that the Board of Appeal’s finding that there is a specific need for footwear fitting the arch of a person’s foot is incorrect (see paragraph 17 above). The fact that footwear must fit the wearer’s foot and the shape of the wearer’s arch is a characteristic of footwear and even corresponds to a need. In that regard, the fact – which, moreover, has not been established by the applicant – that companies do not advertise such a characteristic is irrelevant (see paragraph 17 above). Not all characteristics of footwear are the subject matter of advertising. The fact that footwear is intended to fit correctly the foot of the person wearing it, in order to provide them with adequate support and comfort, corresponds to a general expectation of the relevant public, which does not necessarily need to be reminded of that fact through advertising campaigns.

57 Second, the question of whether the expression ‘arch fit’ cannot be found in a dictionary and the applicant’s assertion that the fact that that expression cannot be found in a dictionary strongly suggests that it is not descriptive are irrelevant in that context (see paragraph 20 above). Contrary to the applicant’s claim, there is no need to ascertain, in the present case, whether the fact that a term can or cannot be found in a dictionary ‘strongly suggests’ that it is not descriptive. The use of a sign cannot be assessed only by consulting a lexicon and therefore in abstracto, but must be considered in the light of the goods and services concerned. For reasons previously set out, the expression ‘arch fit’ must be regarded as having a sufficiently direct and specific link with one of the characteristics of the goods covered by the application for registration at issue. It is therefore descriptive of footwear, irrespective of whether it cannot be found in any lexicon.

58 Third, in so far as the applicant submits that the expression ‘arch fit’ requires some interpretation by the relevant public in order to determine its meaning, since that public would not use that expression to describe footwear or one of its characteristics because there is no ‘perfect match’ for every user (see paragraph 18 above), that argument must be rejected as unfounded in the light of the considerations in paragraph 45 above. In fact, the expression ‘arch fit’ and the goods in question have a sufficiently direct and specific link for the relevant public to perceive it as being the description of one of the characteristics of footwear, without any interpretation or further thought. The relevant public is comprised, in the present case, of the English-speaking general public, for which the words ‘arch’ and ‘fit’ and their combination in the expression ‘arch fit’ do not pose any particular difficulty in their interpretation as regards footwear.

59 Fourth, the argument alleging inconsistency between the Board of Appeal’s assessment of the direct and specific link between the mark applied for and the goods in question, on the one hand, and recent case-law of the Court, on the other hand (see paragraph 19 above), must be rejected on the following grounds.

60 Admittedly, in the judgments of 7 May 2019, vita (T‑423/18, EU:T:2019:291), and of 25 June 2020, OFF-WHITE (T‑133/19, not published, EU:T:2020:293), the Court examined whether white and the colour named ‘off-white’ had a direct and immediate link with the nature of the goods that were the subject matter of the proceedings, regarding namely kitchen utensils and appliances (household containers, food processors, etc.) in Case T‑423/18 and items for personal use (soaps, jewellery, etc.) in Case T‑133/19. In paragraph 45 of those judgments, the Court held that the colour white and ‘off-white’ were purely random and incidental aspects which did not, in any event, have any direct and immediate link with the nature of the goods in question, as those goods were available in many other colours. Accordingly, the Court was unable to find that the specific colours concerned were a characteristic that was inherent to the nature of those goods.

61 Unlike a colour, which is, admittedly, a random and incidental aspect not only as regards the goods in question in Cases T‑423/18 and T‑133/19 but also as regards footwear, the fact that a shoe must fit the arch of a foot is one of the characteristics of those goods. It is an objective characteristic, since it is usual and expected and inherent to the nature of footwear. As the Court’s case-law cited by the applicant (see paragraph 19 above) was not developed on the basis of the same premiss, the applicant’s argument alleging inconsistency between that case-law and the Board of Appeal’s conclusion that there is a direct link between the mark applied for and the goods it covers must be rejected as unfounded.

62 In the fourth place, the fact that the expression ‘arch fit’ does not exist per se (see paragraph 20 above) and, more specifically, that it is not found in dictionaries is irrelevant to the finding that that expression is descriptive of one of the characteristics of footwear. Many descriptive expressions do not exist ‘per se’, without it preventing them from being perceived by the relevant public as being descriptive of the goods in question or of one of their characteristics, should they be used (see, to that effect, judgments of 23 October 2007, BORCO-Marken-Import Matthiesen v OHIM (Caipi), T‑405/04, not published, EU:T:2007:315, paragraph 35, and of 14 December 2011, Häfele v OHIM (Vorfront), T‑531/10, not published, EU:T:2011:745, paragraph 26).

63 In the fifth place, the argument related to the fact that EUIPO accepted, in its previous decision-making practice, the registration of marks made up of the words ‘arch’ or ‘fit’ in respect of goods in Class 25 or marks comparable to the mark sought to be registered in the present case (see paragraph 21 above) must also be rejected as unfounded.

64 Admittedly, the EU judicature has held that 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 especial care whether it should decide in the same way or not (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 74, and of 24 November 2015, Intervog v OHIM (meet me), T‑190/15, not published, EU:T:2015:874, paragraph 39).

65 However, those principles must be consistent with respect for legality. Consequently, a person who files an application 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 to the benefit of someone else (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76, and of 24 November 2015, meet me, T‑190/15, not published, EU:T:2015:874, paragraph 40).

66 Moreover, for reasons of legal certainty and of 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 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, paragraph 77, and of 24 November 2015, meet me, T‑190/15, not published, EU:T:2015:874, paragraph 41).

67 Last, it should be borne in mind that it is settled case-law that 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 registrability of a sign as an EU trade mark must be assessed solely on the basis of that regulation, as interpreted by the Union judicature, and not on the basis of a previous decision-making practice of those boards (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and of 24 November 2015, meet me, T‑190/15, not published, EU:T:2015:874, paragraph 42).

68 In the present case, it is apparent from the contested decision that the Board of Appeal carried out a full and specific examination of the mark applied for in order to refuse its registration. Moreover, it follows from the examination of the other complaints raised by the applicant that that examination led the Board of Appeal to rely correctly on the absolute ground for refusal of registration under Article 7(1)(c) of Regulation 2017/1001 in order to preclude the registration of the mark applied for. As the examination of the mark applied for in the light of that provision could not have resulted, in itself, in a different outcome, the applicant’s claims relating to the failure to take into consideration the registration of other marks cannot succeed. The applicant cannot therefore rely validly on previous EUIPO decisions in order to invalidate the Board of Appeal’s finding that registration of the mark applied for is incompatible with Regulation 2017/1001.

69 In the sixth place, regarding the applicant’s complaint that the mark applied for does not differ from other marks the registration of which was ‘accepted’ by the Court on the ground that those marks were not descriptive or were even distinctive (see paragraph 22 above), it must be noted that, similar to what has just been stated regarding the relevance of EUIPO’s decision-making practice, the applicant cannot rely validly on previous judgments of the Court in order to invalidate the Board of Appeal’s finding that registration of the mark applied for is incompatible with Regulation 2017/1001.

70 In the seventh place, having regard to the foregoing and contrary to the applicant’s claim (see paragraph 23 above), no finding of a breach of the principle of equal treatment can be made in the present case.

71 Having regard to all the foregoing considerations, the first plea must be rejected in its entirety.

The second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001

72 The applicant claims, in essence, that the Board of Appeal was wrong in finding that the mark applied for was devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001. The Board of Appeal also incorrectly applied the requirements relating to the assessment of the distinctive character of the mark.

73 The applicant submits that, where the meaning of a sign is vague or ambiguous or where its interpretation requires considerable mental effort on the part of the relevant public, that sign will be likely to be considered distinctive, because that public will not establish a clear and direct link between the mark concerned and the goods and services for which protection is sought. The applicant goes on to state, supported by case-law, that it is, however, not necessary for a mark to be the work of an invention for a finding that it is distinctive. It is not necessary for marks to have any specific degree of artistic creativity or imagination. According to the applicant, ordinary words can therefore always be used as distinctive marks and, in fact, a minimum degree of distinctive character is sufficient.

75 In the first place, it must be pointed out that, as is evident from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal applies in order for the sign not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).

76 Accordingly, given that, for the goods in question, it follows from the examination of the first plea that the mark applied for is descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001 and that ground alone justifies the refusal to register that mark, there is no need to examine the merits of the second plea alleging infringement of Article 7(1)(b) and (2) of that regulation.

77 In the second place and in any event, it must be pointed out that the Courts have previously held that a sign which, in relation to the goods or services for which its registration as a mark is applied for, has descriptive character for the purposes of Article 7(1)(c) of Regulation 2017/1001 is – save where Article 7(3) applies – devoid of any distinctive character as regards those goods or services (see judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 33 and the case-law cited, and of 23 September 2015, Mechadyne International v OHIM (FlexValve), T‑588/14, not published, EU:T:2015:676, paragraph 78 and the case-law cited).

78 For the reasons set out in paragraphs 34 to 69 above, it must be held that the mark applied for is descriptive, for the purposes of Article 7(1)(c) of Regulation 2017/1001, as regards footwear. Moreover, the applicant did not argue or show that the mark applied for had acquired, in respect of the goods in question, distinctive character through use, with the result that Article 7(3) of Regulation 2017/1001 does not apply.

79 Therefore, the Board of Appeal was correct in finding that that mark was devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001.

80 The second plea must also be rejected and, therefore, the action in its entirety must be dismissed.

81 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Skechers USA v EUIPO (ARCH FIT) (EU trade mark - Judgment) [2021] EUECJ T-598/20 (21 December 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T59820.html Cite as: [2021] EUECJ T-598/20, ECLI:EU:T:2021:922, EU:T:2021:922

Court of Justice of the European Communities (including Court of First Instance Decisions)