THE BOTTOM LINE
- Marketing Slogans vs. Trademarks: This case is a crucial reminder that a phrase that perfectly describes a product’s function (like “hands-free slip-ins”) makes for great marketing copy but a weak trademark. The more descriptive a name is, the less likely it is to be granted exclusive rights.
- The EU’s Stringent Standard: A trademark application can be rejected if the name is considered descriptive in any part of the European Union. For Skechers, the mark’s clear meaning to English-speaking consumers was enough for a bloc-wide refusal.
- Competitors Remain Free: The court’s decision prevents one company from monopolizing common descriptive terms. This ensures that other footwear brands can freely use phrases like “hands-free” or “slip-in” to describe the features of their own products.
THE DETAILS
The EU’s General Court has upheld the refusal to register Skechers’ proposed trademark “HANDS-FREE SLIP-INS” for footwear. In a recent order, the court sided with the European Union Intellectual Property Office (EUIPO), concluding that the phrase is purely descriptive and lacks the distinctive character required for a trademark. The core of the decision rests on a simple principle: a trademark must identify the source of a product, not just describe its characteristics. The court found that the average consumer would immediately and unambiguously understand “HANDS-FREE SLIP-INS” to mean shoes that can be put on without using one’s hands, making it a description of the product’s function rather than a unique brand identifier.
Breaking down its reasoning, the court analyzed the phrase as the consumer would. It determined that “hands-free” is a common expression meaning “usable without hands.” Similarly, “slip-ins” was viewed as an obvious variation of the well-known term “slip-ons” or the verb “to slip in,” clearly conveying the action of easily putting on the footwear. When combined, the court found the phrase leaves no room for interpretation and requires no “cognitive leap” from the consumer. It simply states a key, marketable quality of the goods. Skechers’ arguments that the term was inventive or unusual were dismissed, with the court noting that a phrase doesn’t need to be in a dictionary to be understood descriptively.
This ruling reinforces two key tenets of EU trademark law that executives and legal teams must consider. First, decisions from other jurisdictions—including the UK, where Skechers had secured a registration—hold no sway over the autonomous EU system. Each application within the EU is judged strictly on its own merits under EU law. Second, the “any part of the Union” rule means that a term’s descriptiveness in a single major language can invalidate a mark across all 27 member states. The case serves as a powerful cautionary tale for brand managers: in the rush to create a catchy, functional product name, don’t sacrifice the distinctiveness needed to secure long-term, defensible intellectual property rights.
SOURCE
Source: General Court of the European Union
