Can Slogan Be Registered As A Trademark? – EU Perspective

Introduction

Slogans are brief, memorable words that are commonly used in advertising to promote a specific company. Companies seek to protect the value of their trademarks since they can be quite valuable to the brand. Under trademark law, however, phrases are frequently deemed not to disclose the commercial origin of products or services, which is a trademark’s primary role. As a result, slogan registration is frequently denied due to a lack of distinctiveness. The criterion for distinctiveness for slogans is the same as for other word marks, i.e., it should be examined in light of the goods or services for which registration has been sought, as well as the public’s perception of the mark. It has been explicitly declared in settled EU case law (such as in case C-398/08 P, Audi) [2010] that applying higher standards to slogan marks than to other types of marks is incorrect. Using a mark as an advertising slogan, on the other hand, does not prevent it from being registered as a trademark. Furthermore, the relevant public’s impression of each of the many categories of marks is not always the same, and it may be more difficult to prove distinctiveness in the case of slogans than in the case of broad word marks. In the case of Oatly AB v. European Union Intellectual Property Office (EUIPO), T-253/20 (on January 20, 2021), the EU General Court ruled that the slogan “It’s Like Milk, But Made for Humans” has the minimum degree of distinctive character required by Article 7 (1) (b) of EU Regulation no. 2017/1001 and thus can be registered as a trademark. This blog analyhttps://www.ipandlegalfilings.com/services/trademark-registration/sis the ruling given by the EU court on the issue of whether slogans can be registered as a trademark.

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Background:
The trademark application for the term in question was filed by Oatly AB, a Swedish firm that makes oat-based dairy replacements. According to the EUIPO, the trademark was devoid of any distinctive character in respect of certain groups of products included in Nice classes 29 (milk substitutes), 30 (oat-based products), and 32 (oat-based beverages): in fact, the trademark was devoid of any distinctive character in respect of these products. Oatly AB appealed the EUIPO examiner’s ruling to the EUIPO Board of Appeal. The Board of Appeal, on the other hand, ruled that the trademark applied for lacked any distinguishing character.Consumers would have interpreted it as a laudatory promotional slogan rather than an indicator of the commercial origin of the items for which the registration was sought, according to the Board of Appeal. It would have been appropriate solely for highlighting the positive qualities of the commodities in question, notably that they were comparable to dairy products but, unlike those products, were created exclusively for human use. This, combined with the brand’s length, hindered the consumer from recognizing it as a trademark. Due to the lack of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal concluded that, beyond its promotional meaning, the slogan “it’s like milk but made for humans” was incapable of performing the function of a trademark in relation to the goods at issue. Oatly AB filed an appeal with the EU General Court against the Board of Appeal’s decision, alleging a violation of Article 7 (1) (b) of Regulation no. 2017/1001, claiming that the Board of Appeal erred in assessing the unique character of the trademark applied for.

Analysis

To begin, the EU General Court noted that trademarks devoid of any distinctive character, as defined in Article 7 (1) (b) of Regulation 2017/1001, “are those that are regarded as incapable of performing the essential function of a trademark, namely, identifying the commercial origin of the goods or services at issue,” according to settled case law. Furthermore, the EU General Court stated that

“a minimum degree of distinctive character is sufficient to exclude the adoption of the absolute reason for denial set forth in Article 7(1)(b) of Regulation 2017/1001,” as stated by the EU General Court.

However, the EU General Court declared that such use does not preclude the registration of trademarks consisting of advertising slogans, quality indicators, or incitements to acquire the products or services covered by the mark. Furthermore, it is incorrect to employ standards that are stricter than those that apply to other types of trademarks when evaluating the distinctive character of those trademarks. Finally, a trademark’s positive meaning does not hinder it from guaranteeing the provenance of the goods or services it covers to consumers: “such a mark might be interpreted by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services.” As a result, a trademark consisting of an advertising slogan may have a distinctive character if, in addition to its promotional role, the relevant public perceives it as an indication of the commercial origin of the goods and services.

In light of this principle, the EU General Court considered whether the trademark “It’s Like Milk, But Made for Humans” has a distinctive character, stating that the conjunction “but” in the middle of the sentence creates the impression of a conflict between the first and second parts of the trademark (“it’s like milk”). As a result, this mark conveys “not only the idea that the goods at issue, which are foodstuffs, are akin to milk and are intended for human consumption, but also the idea that milk itself is not”; the trademark in question challenges the widely held belief that milk is an important part of the human diet. According to the EU General Court, this trademark communicates to the relevant public a simple message capable of differentiating the applicant’s goods from those of a different commercial origin.

Relevant Case Laws:

The General Court decided that a slogan mark might be interpreted by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services in the case Smart Technologies ULC v Office for Harmonisation in the Internal Market (12 July 2012) C 311/11. As a result, the fact that the mark is also, and possibly even principally, recognized as a promotional formula has no influence on its distinctive character as long as the consumer perceives it as an indication of that origin.

The Court of Justice of the European Union has established criteria for assessing distinctive character in its case law, and the EUIPO refers to these criteria in its guidelines and uses them when evaluating the distinctive character of a slogan (Audi AG v Office for Harmonisation in the Internal Market (2010) C-398/08 P and Smart Technologies ULC v Office for Harmonisation in the Internal Market (2011) T-523/09).

When an advertising slogan is “a play on words, and/or introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising, or unexpected, and/or has some particular originality or resonance, and/or triggers a cognitive process or requires an interpretative effort in the minds of the relevant public,” it is likely to be distinctive.

Additionally, odd grammatical structures and/or alliteration, metaphors, rhyme, or paradox may aid in determining whether a phrase is unique. However, it is well-established case law (Audi AG v Office for Harmonisation in the Internal Market (2010) C-398/08 P) that an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension that would create surprise and thus make a striking impression’ in order to be distinctive. In actuality, without inventive features, the relevant public is more likely to regard the mark as a laudatory promotional formula rather than an indication of the economic origin of the goods and services covered by the mark, leaving it devoid of distinguishing character.

Held:

The EU General Court found that the EUIPO Board of Appeal erred in finding that the mark applied for lacked any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, upheld Oatly AB’s appeal, and annulled the previous decision by confirming that the slogan “It’s Like Milk, But Made for Humans” could be registered as a trademark.

Concluding Remarks:

The number of decisions decided by the EU General Court and European Court of Justice on slogan trademarks throughout the years reflects their importance in advertising, particularly in the consumer goods and food industries. With this decision, the EU General Court confirms that an advertising slogan can be registered as a trademark provided it delivers a message that can trigger a cognitive process in the relevant audience, making it simple to remember and, as a result, capable of fulfilling the trademark’s origin function.The final challenge, however, is striking the correct balance between communicating the message, which is typically laudatory when evaluating the meaning of promotional slogans from a marketing standpoint, and not modifying the message too much in order to register the slogan. Even while particular inventiveness or thought-provoking aspects aren’t required when it comes to trademark protection for slogans, they almost always require elements that harness the mental process. As a result, slogans that focus solely on the positive or negative elements of a product or service are frequently regarded as being excessively informative and hence lacking in originality.The more shocking or provocative the combination of words used in the appropriate phrase, the more likely it is to be remembered, which is not the case with more informational slogans.

Author: Anuja Saraswat an intern at IP And Legal Filings,  in case of any queries please contact/write back us at support@ipandlegalfilings.com.