T-734/25

ORDER OF THE GENERAL COURT (Sixth Chamber) 10 June 2026 (*) ( EU trade mark – International registration designating the European Union – Word mark CONTOUR FOAM – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law ) In Case T‑734/25, Skechers USA, Inc. II, established in Manhattan Beach, California (United States), represented by J. Bogatz, Y. Stone, J. Graf Wrangel, L. Bieber and E. Peller, lawyers, applicant, v European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent, defendant, THE GENERAL COURT (Sixth Chamber), composed of P. Škvařilová-Pelzl (Rapporteur), President, I. Nõmm and D. Kukovec, Judges, Registrar: V. Di Bucci, makes the following Order 1        By its action under Article 263 TFEU, the applicant, Skechers USA, Inc. II, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 August 2025 (Case R 486/2025-5) (‘the contested decision’). Background to the dispute 2        On 30 May 2024, the applicant, claiming priority of American trade mark No 98574272 filed on 29 May 2024, obtained from the International Bureau of the World Intellectual Property Organization (WIPO) the international registration No 1795809 designating the European Union for the word sign CONTOUR FOAM. 3        The mark applied for covered goods 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, corresponding to the following description: ‘Footwear’. 4        By decision of 5 March 2025, the examiner rejected the application for registration of the mark applied for on the basis of Article 7(1)(b) and (c) of 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), read in conjunction with Article 7(2) of that regulation. 5        On 19 March 2025, the applicant filed a notice of appeal with EUIPO against the examiner’s decision. 6        By the contested decision, the Board of Appeal dismissed the appeal on the ground that the mark applied for was descriptive and devoid of any distinctive character, within the meaning of Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation. Forms of order sought 7        The applicant claims that the Court should: –        annul the contested decision; –        order EUIPO to pay the costs. 8        EUIPO contends that the Court should: –        dismiss the action; –        order the applicant to pay the costs in the event that a hearing is convened. Law 9        Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings. 10      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give a decision without taking any further steps in the proceedings, notwithstanding that one of the parties has requested a hearing (order of 6 October 2015, GEA Group v OHIM (engineering for a better world), T‑545/14, EU:T:2015:789, paragraph 13). 11      The applicant relies on two pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation 2017/1001 and the second alleging infringement of Article 7(1)(b) of that regulation. The first plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001 12      The applicant claims that the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 in finding that the mark applied for was descriptive with regard to the goods at issue. 13      EUIPO disputes the applicant’s arguments. 14      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. 15      Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37). 16      In order 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 relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited). 17      A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited). 18      It is in the light of those considerations that the Court must examine whether, as the applicant submits in the context of the present plea, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001. The relevant public and territory 19      In paragraph 23 of the contested decision, the Board of Appeal found, first, that the goods at issue were targeted mainly at the general public. That assessment, which, moreover, is not disputed by the applicant, must be upheld. 20      In paragraphs 24 and 67 of the contested decision, the Board of Appeal found, secondly, that, as the mark applied for was made up of English words, the absolute ground for refusal had to be assessed by reference to the English-speaking public in the European Union. In that regard, it noted that, in addition to the public of Ireland and Malta, that public consisted of the public of Member States in which English is widely understood, such as Denmark, Cyprus, the Netherlands, Finland and Sweden. 21      The applicant submits that the Board of Appeal erred in that assessment in so far as the general public of the European Union has only a very basic knowledge, if any, of the English language, outside the Member States where the official language is English. The applicant thus submits that the assessment that the mark applied for is descriptive can be made only by reference to the general public of Ireland and Malta, since the expression ‘contour foam’ is not composed of basic English terms which would be understood by the public in EU Member States where English is not the official language. 22      In that regard, it should be recalled that, in accordance with Article 7(2) of Regulation 2017/1001, it is sufficient that an absolute ground for refusal obtains in part of the European Union for a mark to be refused registration and that part may be limited to a single Member State (see, to that effect, judgment of 10 July 2024, Bartex Bartol v EUIPO – Grupa Chorten (duch puszczy), T‑473/23, not published, EU:T:2024:458, paragraph 46 and the case-law cited). 23      The applicant’s arguments relating to the definition of the relevant public and to the mark applied for being composed of basic English terms must therefore be rejected as ineffective, since the Board of Appeal was correct to find that the relevant public in the present case consisted, inter alia, of the general public in the territories of Ireland and Malta. The meaning of the mark applied for 24      In paragraphs 28 to 33 of the contested decision, the Board of Appeal found, in essence, that the combination of words ‘contour foam’ would be understood by the English-speaking public as meaning ‘foam that is shaped to fit the form of something’. In that regard, it relied on definitions from the Collins English Dictionary, according to which the English term ‘contour’ can mean ‘shaped to fit the form of something’, while the English term ‘foam’ refers inter alia to ‘rubber or plastic in the form of a cellular mass similar to foam in structure’. Furthermore, it noted that the combination of words ‘contour foam’ was a compound noun very much like ‘contour map’ or ‘contour chair’. 25      The applicant disputes the meaning of the mark applied for used by the Board of Appeal. First, it submits that the expression ‘contour foam’ does not appear, as such, in any dictionary. Secondly, it claims that the term ‘contour’ most commonly refers to an ‘outline’ or ‘shape’, and the more elaborate sense of ‘shaped to fit’ only emerges in connection with additional words such as ‘adapt’, ‘mould’ or ‘fit’, which are missing from the mark applied for. Consequently, according to the applicant, it is more likely that the English-speaking public will understand the mark applied for as meaning ‘shaped foam’ or ‘foam with a shape or outline’. Thirdly, the meaning of the expression ‘contour map’ does not support the view that the mark applied for will immediately be understood as ‘foam that is shaped to fit the form of something’, while the expression ‘contour chair’ is not a term known to the average English-speaking consumer. 26      First, the Court must reject at the outset the applicant’s argument alleging that the expression ‘contour foam’ does not appear in any dictionary, since it is apparent from settled case-law that the Board of Appeal is under no obligation to prove that the sign in respect of which registration is sought is included in dictionaries (see, to that effect, judgment of 23 October 2007, BORCO-Marken-Import Matthiesen v OHIM (Caipi), T‑405/04, not published, EU:T:2007:315, paragraph 42 and the case-law cited). 27      Secondly, it is expressly made clear in the Collins English Dictionary definition of the English term ‘contour’, cited by the examiner and the Board of Appeal, that that term, when used as a modifier, as in the mark applied for, means ‘shaped to fit the form of something’. It follows that the applicant’s argument that the English terms ‘adapt’, ‘mold’ or ‘fit’ are missing from the mark applied for cannot succeed. Moreover, the applicant’s argument is also contradicted by the expression ‘contour chair’, mentioned as an example under the definition of the term ‘contour’ in the Collins English Dictionary, which refers to a chair shaped to fit the form of the body. 28      Thirdly, the Board of Appeal correctly observed that, according to the Collins English Dictionary, the English term ‘foam’ can refer not only to ‘any of a number of light cellular solids made by creating bubbles of gas in the liquid material and solidifying it’, but also to ‘rubber or plastic in the form of a cellular mass similar to foam in structure’. 29      Fourthly, contrary to what the applicant claims, the Board of Appeal did not rely on the meaning of the expression ‘contour map’ in order to infer that the mark applied for would be understood as ‘foam that is shaped to fit the form of something’. In paragraph 31 of the contested decision, the Board of Appeal confined itself to finding, correctly, that the combination of words ‘contour foam’ is a compound noun very much like ‘contour map’ or ‘contour chair’ and that it is grammatically correct. 30      It thus follows from the foregoing considerations that the Board of Appeal did not make an error of assessment in concluding, on the basis of the meanings referred to in paragraphs 27 and 28 above, that the mark applied for, taken as a whole, would be understood by the relevant English-speaking public as a compound noun meaning ‘foam that is shaped to fit the form of something’. The link between the meaning of the mark applied for and the goods at issue 31      In paragraphs 37 to 43 of the contested decision, the Board of Appeal found, in essence, that the mark applied for conveyed direct and specific information on characteristics of ‘footwear’ and that it therefore fell within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001. In particular, the term ‘foam’ designates a variety of materials commonly used to make the foam used in shoes, which works as a shock absorber, cushioning the impact on feet with each stride, while making the shoe light and comfortable. Examples from websites show, moreover, that on the market for ‘footwear’, the term ‘contour’ is used in the sense of ‘shaped to fit the form of feet’. The Board of Appeal inferred from this that, in relation to ‘footwear’, the relevant public will perceive the mark applied for as indicating that those goods are made using ‘foam that is shaped to fit the contours of the foot’, which is descriptive of the nature, quality and composition of the goods at issue. 32      The applicant submits, in essence, that, first, the mark applied for has no direct and specific link to ‘footwear’, since its meaning is vague and provides no information about the characteristics of the goods at issue. Furthermore, it submits that, when the relevant public perceives the sign applied for, several mental steps are required in order to link it with any characteristics of footwear. Secondly, the applicant claims, relying on the judgment of 20 September 2001, Procter & Gamble v OHIM (C‑383/99 P, EU:C:2001:461), that the juxtaposition of the words ‘contour’ and ‘foam’ is unusual in everyday language for describing ‘foam that is shaped to fit the form of something’, with the result that that is sufficient to confer distinctive character on the mark applied for. Thirdly, the applicant complains, in essence, that the Board of Appeal failed to take into account the registrations of several signs which are comparable to the sign applied for in the European Union. 33      First, it should be noted that the applicant does not call into question the fact that the English term ‘foam’ designates, inter alia, a variety of materials, such as rubber, polyurethane or polyethylene, which are used to make foam in shoes. Similarly, it has not put forward any argument capable of calling into question the fact that foam is commonly used in shoes as a shock absorber, which makes it possible to cushion the impact on feet with each stride and to reduce stress and potential damage to joints and muscles, thus allowing for increased comfort and decreased fatigue, while making the shoe light and comfortable, as the Board of Appeal has correctly stated. 34      In those circumstances, the relevant public will immediately and directly perceive the English term ‘foam’ as designating the foam composition of the ‘footwear’, with the result that, contrary to what the applicant submits, it will not focus on its alternative meaning of ‘a mass of small bubbles that are formed when air and a liquid are mixed together’ in the context of the goods at issue. 35      Secondly, the various examples mentioned by the Board of Appeal in paragraphs 39 and 40 of the contested decision demonstrate use of the English term ‘contour’ to designate, on the market for ‘footwear’, memory foam insoles which adapt to individual foot contours or contoured footbeds which mould to the foot. In that regard, the applicant’s argument that the term ‘contour’, as used in those various examples, does not convey as such the idea of adaptation or fitting cannot call that finding into question, since it has been established in paragraph 27 above that that term could, in itself, mean ‘shaped to fit the form of something’. In those circumstances, the relevant public will immediately and directly perceive the English term ‘contour’, in the context of ‘footwear’, as meaning ‘shaped to fit the form or contours of the foot’. 36      Thirdly, in those circumstances, the Board of Appeal was justified in finding that the expression ‘contour foam’, taken in the context of ‘footwear’, provides direct and specific information on the nature, quality and composition of the goods at issue, given that it conveys the message that the ‘footwear’ is made using foam that is shaped to fit the form or contours of the foot. 37      In that regard, it has already been held that the fact that the footwear fits or must fit the foot constitutes 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 (see, to that effect, judgment of 21 December 2021, Skechers USA v EUIPO (ARCH FIT), T‑598/20, not published, EU:T:2021:922, paragraph 42), with the result that the applicant is not justified in claiming, relying on the judgment of 25 June 2020, Off-White v EUIPO (OFF-WHITE) (T‑133/19, not published, EU:T:2020:293), that the message conveyed, in the present case, by the mark applied for does not refer to a characteristic which is objective and inherent to the nature of the goods at issue. For the same reason, the applicant’s argument that footwear can have other desirable characteristics, such as design, style, durability, protection, lightness or being waterproof, must be rejected as ineffective. 38      Fourthly, it is true that it follows from the case-law that any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark (judgment of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 40). However, in the present case, the expression ‘contour foam’, taken as a whole, is merely a combination of two English words which complies with English grammar rules and which the relevant public will readily and immediately understand in the context of ‘footwear’. Therefore, the applicant’s argument that the juxtaposition of the terms ‘contour’ and ‘foam’ is unusual for describing foam that is shaped to fit the form of the foot cannot succeed. 39      It follows that the link between the mark applied for and the goods at issue, namely ‘footwear’, is sufficiently direct and specific, within the meaning of the case-law cited in paragraph 16 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. 40      It is apparent from all the foregoing considerations that the Board of Appeal was correct to find that the mark applied for was caught by the absolute ground for refusal set out in Article 7(1)(c) of Regulation 2017/1001. 41      That conclusion cannot be called into question by the applicant’s argument that the Board of Appeal did not take into account the existence of registrations of signs comparable to the sign applied for as EU trade marks. 42      Admittedly, it has been held that, in the light of the principle of equal treatment and the principle of good administration, 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). 43      However, those principles must be consistent with respect for legality. Consequently, a person who applies 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 for 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). 44      Moreover, for reasons of legal certainty and of good 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). 45      Lastly, it should be noted that, according to settled case-law, the decisions concerning the registration of a sign as an EU trade mark which EUIPO is led 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 EU judicature, and not on the basis of a previous decision-making practice of the Boards of Appeal (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). 46      In the present case, the mark applied for is caught by one of the grounds for refusal set out in Article 7(1) of Regulation 2017/1001. In so far as it was held in paragraph 40 above that the Board of Appeal was correct to find that the registration of the mark applied for was incompatible with that regulation, the applicant cannot successfully rely on EUIPO’s previous decision-making practice in order to invalidate that finding. 47      The first plea must therefore be rejected as manifestly lacking any foundation in law. The second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001 48      The applicant submits, in essence, that the mark applied for is not devoid of any distinctive character. 49      EUIPO disputes the applicant’s arguments. 50      It is clear from Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign applied for not to be registrable as an EU trade mark (see judgment of 26 July 2023, Yayla Türk v EUIPO– Marmara Import-Export (Sütat), T‑315/22, not published, EU:T:2023:432, paragraph 76 and the case-law cited). 51      In the present case, since it has been established that the mark applied for was descriptive of the goods at issue, within the meaning of Article 7(1)(c) of Regulation 2017/1001, and that in itself justifies the refusal of the registration, the second plea, alleging infringement of Article 7(1)(b) of that regulation, must be rejected as ineffective. 52      In the light of all of the foregoing, the action must be dismissed in its entirety as manifestly lacking any foundation in law. Costs 53      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. 54      Although the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that a hearing was convened. Since no hearing was held, each party must be ordered to bear its own costs. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby orders: 1.      The action is dismissed as manifestly lacking any foundation in law. 2.      Skechers USA, Inc. II and the European Union Intellectual Property Office (EUIPO) shall each bear their own costs. Luxembourg, 10 June 2026. V. Di Bucci P. Škvařilová-Pelzl Registrar President *      Language of the case: English.