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May 29, 2020, By

A recent decision from the EU Intellectual Property Office has affirmed that when registering a trade mark you need to carefully consider the requirements of each individual territory. In addition, the EU Intellectual Property confirmed that just because you have previously been granted a trade mark for a specific term, does not mean that you will automatically meet the necessary requirements for a trade mark.

For those avid fans of the TV drama Gossip Girl, these four letters ‘XOXO’ will always have a special place in your heart, however the EU Intellectual Property Office has ruled that Global Brand Holdings LLC were unable to register ‘XOXO’ as a trade mark as it was found devoid of distinctive character.

This essentially means that the trade mark is not capable of being a trade mark as it is does not perform the essential function of a trade mark – that is to identify the origin of goods and/or services.

Global Brand Holdings, tried to make various arguments in favour of allowing the application through including that they have previous registrations for the mark ‘XOXO’. However, the EU Intellectual Property Office held that the letters ‘X’ and ‘O’ are well known as an expression of love, and therefore this feeling on goods is not sufficient to identify the origin of the goods.

When thinking about expanding your trade mark protection, you should always carefully consider the requirements of each territory. We would recommend that you seek specialist advice before submitting trade mark applications to give you the best chance of getting your trade mark registered.

Briffa are experts in all aspects of trade mark law and practice, and can assist you whether you are starting your trade mark portfolio, expanding and managing your trade marks or enforcing your rights. Please contact us for a free consultation with one of our specialist trade mark lawyers on 020 7288 6003 or at [email protected] and we can help you protect your brand.

Written by Ceyda Sam, Solicitor