By Revomark – UK Trademark Registration Experts

In an intriguing twist that highlights the divergent paths of UK and EU trade mark practice since Brexit, Skechers (the globally recognised footwear and apparel brand) recently faced a split outcome in their attempt to register the trade mark “Hoodless Hoodies”.

The mark was successfully registered in the UK for goods in Class 25 – covering apparel and footwear. However, its EU counterpart was refused registration by the European Union Intellectual Property Office (EUIPO). So what led to this differing outcome, and what does it mean for brand owners navigating both systems?

🧵 The Mark: “Hoodless Hoodies”

Skechers sought to protect the term “Hoodless Hoodies” for use on their clothing and footwear lines – presumably as part of a marketing effort to promote a product line featuring the comfort of a hoodie without the traditional hood.

✅ UKIPO: A Broad View of Distinctiveness

The UK Intellectual Property Office (UKIPO) accepted the mark and granted registration without opposition or refusal. Why?

• The UK examiner likely considered the phrase sufficiently distinctive, even if somewhat descriptive.
• The term is unusual, paradoxical, and not commonly used in trade.
• From a UKIPO perspective, the mark conveys a unique branding twist that doesn’t
  simply describe the goods in a straightforward manner.

❌ EUIPO: Descriptive and Non-Distinctive

In contrast, the EUIPO rejected the application. The reasoning?

• The term “Hoodless Hoodies” was deemed descriptive and lacking in distinctiveness under Articles 7(1)(b) and (c) of the EU Trade Mark Regulation.
• The EU examiner held that relevant consumers would immediately understand the mark to describe the nature or characteristics of the goods – namely, a hoodie without a hood.
• As such, the mark was not capable of functioning as an indicator of commercial origin.

⚖ Post-Brexit Divergence in Practice

This case underscores the increasingly independent examination standards between UKIPO and EUIPO post-Brexit:

• The UK may be more flexible or commercially pragmatic in assessing borderline descriptive marks.
• The EU, on the other hand, tends to err on the side of public domain language, particularly for descriptive or promotional terms.
  For brands filing in both regions, it’s no longer safe to assume a consistent outcome across the UK and EU – even for the same mark and goods

📌 Key Takeaways for Brand Owners

1. Conduct dual-region distinctiveness assessments. Just because a mark is registrable in the
   UK doesn’t mean it will pass in the EU (and vice versa).
   
2. Avoid overly descriptive terms – especially in the EU – unless secondary meaning can be shown.
   
3. Consider coined or suggestive branding where possible, which is more likely to achieve cross-jurisdictional protection.
   

💬 FinalThoughts

The “Hoodless Hoodies” decision is a useful reminder of how even simple, clever product branding can run into trade mark barriers—depending on where you file. In a post-Brexit IP landscape, brand owners need tailored, jurisdiction-specific advice when building or expanding their portfolios.

If you need advice on trade mark registrability or filing strategies across the UK and EU, our specialist IP team would be happy to help.