New Yorker Marketing & Media International GmbH (New Yorker) brought invalidity actions against both marks. New Yorker argued that Compton, with its nearly 100,000 inhabitants at the outskirts of Los Angelas USA, is known as the cradle of gangsta rap. Gangsta rap in turn influenced street fashion. The marks were therefore descriptive of the geographical origin and non-distinctive.

A trade mark is descriptive of the geographical origin within the meaning of Art. 7(1)(c) of the European Union Trade Mark Regulation (EUTMR) if it is:

1. known to the relevant public as a geographical place (at the time of filing of the application); and
2. therefore associated with the category of goods/services that registration is sought for (at the time of filing of the application or likely in the future).

The invalidity division of the European Union Intellectual Property Office (EUIPO) rejected the applications, the EUIPO Board of Appeal declared the marks invalid, and the General Court held that the appeal was well founded.

How to form a relevant subcategory of goods

The Board of Appeal found that the goods (that is, clothing and bags) are of a general nature and cover a large number of individual products. To assess descriptiveness the Board of Appeal formed subcategories. It differentiated between “streetwear items” and “conventional clothing”, concluding that streetwear items are mainly aimed at younger members of the public, are regularly sold in special stores or in separate departments of clothing stores, and express a group affiliation through certain external features. For streetwear, the goods in question would be descriptive.

The General Court found that the Board of Appeal incorrectly used “streetwear” synonymously with “street fashion”, that is, a specific style also known as hip hop fashion. As such, it was unsuitable to form a subcategory that could invalidate the broader category of goods. The decisive criterion is the purpose/intended use. Nature and characteristics of the goods concerned are irrelevant. The intended purpose of clothing is to cover, conceal, clothe and protect the body against the elements. The intended purpose of the class 18 goods was to pack, protect and transport various personal items. Streetwear items served those purposes and can therefore not form a distinct subcategory.

Who is the relevant public?

The General Court found that the Board of Appeal (limiting the assessment to Germany) erred in defining the relevant public: effectively as purchasers of streetwear items with a particular interest in streetwear influenced by the hip hop movement.

A narrower circle within the public at large composed of persons, for whom the goods are intended and who have specific knowledge enabling them to better understand the meaning of certain terms or concepts, may be taken into account, but only if they form a substantial part of the relevant public.

The General Court found that the submitted evidence did not prove that the relevant German public knew the city of Compton in 2015. Numerous media articles about the myth of Compton demonstrated an interested audience, but do not evidence the awareness level among the general public. The General Court found that Compton was closely associated with gangsta rap of the west coast USA, but that the city does not, by definition, play an equally central role in hip hop culture and rap music as a whole.

Only 54,7000 people (0,67% of the German public) watched the documentary “Straight outta Compton” and the N.W.A. album of the same name ranked 36 in the album charts in Germany. This was considered informative. However, a few percent is not a substantial part of the relevant public.

In short

This decision gives guidance on how to form subcategories of specifications that can invalidate the broader category of goods/services. Purpose/intended use is a decisive factor. Style, target audience, and a specific distribution channel are irrelevant.

Sub-groups of the relevant public can be relevant too, but must form a substantial part of it. A few percent of the general public is insufficient.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: New Yorker Marketing & Media International GmbH v BIW Invest AG
Citation: T 747/22
Date: 28 February 2024
Link to decision: dycip.com/t‑747-22

Jurisdiction: European Union
Decision level: General Court
Parties: New Yorker Marketing & Media International GmbH v BIW Invest AG
Citation: T 746/22
Date: 28 February 2024
Link to decision: dycip.com/t‑746-22