Superdry: For Dry Skin and Waterproof
In its detailed ruling, the Board explains that consumers would view the term “Superdry” as a combination of the everyday words “Super” and “Dry.” According to the Board, “Superdry” could describe a potential characteristic of the products: it could refer to cosmetics “for dry skin” or to bags and clothing that are “waterproof.” This makes the brand descriptive rather than distinctive, so a European trademark registration is out of the question.
50 Older Registrations
Superdry protested: “But what about all our previous registrations?” The company claims to own around 50 European registrations that include the word “Superdry,” with the oldest being a wordmark registration from 2003. All these trademarks were accepted without issues by the European trademark office, according to Superdry. The company likely applied for this latest registration due to the prominently large design of the registered trademark symbol next to the brand name.
Times Change
The Board responded that while those older registrations are noted, times change. ‘It should be noted that market practices, languages and examination practices evolve over time and some of the marks cited may, therefore, have been accepted as they were considered to be registrable at the time of application, though that may not be the case nowadays’, according to the Board. Moreover, the Board continues, ‘it is important to note that all the EUTMs referred to have been accepted by first-instance decisions that have not been contested before the Boards. The latter, as a consequence, did not have the opportunity to assess their registrability.’
Potential Problem for All 50 Registrations
This is a heavy blow for the Superdry trademark, which has already faced challenges in recent years. This decision doesn’t just put the latest trademark application in jeopardy—it could also have consequences for the entire portfolio of 50 older European Superdry registrations.
Last Resort: Acquired Distinctiveness
However, there’s still one last hope for Superdry. The company argued before the Board that the Superdry trademark has acquired distinctiveness through long-term use, extensive advertising, and publicity. According to Superdry, the brand has transcended its descriptive meaning and has become distinctive. The Board’s decision leaves Superdry with the opportunity to now prove this acquired distinctiveness across Europe.
Acquired Distinctiveness from Estonia to Cyprus?
Although Superdry is, in parts of Europe, undoubtedly a well-known brand—especially with figures like David Beckham and his son Brooklyn serving as ambassadors—it will be a significant challenge to demonstrate acquired distinctiveness across the entire EU. This requires proving that Superdry is recognized and established in each of the 27 EU countries, from Cyprus to Estonia. Will they succeed? Is Superdry indeed active and well-known in all EU countries? We’ll find out. For now, the troubled fashion brand has reason to worry.
Bas Kist
Banner image : Eluveitie, CC BY-SA 3.0, via Wikimedia Commons
