EGC´s "HOT SOX" decision doesn´t knock anyone´s socks off

On 26 February 2016, the European General Court (EGC) upheld OHIM´s decision dated 13 May 2014 and ruled in favor of Renfro Corp., deciding that the name “HOT SOX” for hosiery is not descriptive and does not lack distinctiveness.

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Background of the Case and Subject Matter 

In 2008, Renfro Corp. registered Community word mark “HOT SOX”(CTM No. 0962191), the brand name of their socks line, but was challenged by provima Warenhandels GmbH, a seller of special grain products which become wearable thermophores upon microwaving. The applicant said the name “HOT SOX” for socks lacks distinctive character and is overly descriptive, asking for cancellation of the registration. Both the Cancellation Division and the Board of Appeal of OHIM rejected the claims, explaining that terms “socks” and “hot” (in any possible meaning) are not terms that come to mind as complementary, and therefore, are neither descriptive, nor insufficiently distinctive.

The applicant, still standing their grounds, contested OHIM´s decision again and finally brought the case before the EGC.

Decision of the EGC

The EGC agreed with OHIM´s Board of Appeals´ decision: “hot” is not characteristic or usually affiliated with socks, nor does it imply the purpose of socks. The function of socks is to keep feet warm, so there might had been a problem if the term “warming” was used. “Hot” means “overly warm” and it might be seen as actually having a negative connotation.

When it came to the other meaning of “hot”, indicating something alluring, sexy or seductive, it is highly unlikely the average consumer would consider those terms a natural pairing. It could be considered “hot” as “fashionable” or “currently popular”, but, the Court deemed it was not the intended meaning in the word mark “HOT SOX”.

The applicant also tried to prove that the word “sox” is an obvious misspelling of the word “socks”, which makes it descriptive. The Court did take this argument into consideration, but noted that the term “sox” never stands alone. It is always accompanied by the adjective hot. In this case, the trademark should be regarded as a whole sign, and not as individual words that are evaluated separately .

“Sox” is also the distinctive element of the term, meant to catch the consumer´s attention. Combined with the word “hot”, it is sufficient to make the wordmark unusual and distinguishable.

Every angle taken into consideration, the EGC decided the name “HOT SOX” is distinctive and nondescriptive, and therefore eligible for trademark registration.

ECJ´s full decision is available here.