This blog looks at the key takeaway points raised in a report recently published by the EUIPO about slogans, and highlights some of the issues for clients to be aware of when considering their protection as registered trade marks.
1. Background and introduction
Some of the most common queries that we receive from clients are in relation to slogan trade marks and whether or not they can be registered. The answer to this question is a rather frustrating "sometimes", and it will usually depend on a number of factors such as the territory in which registration is sought, and the combination of words contained within the trade mark.
The European Union Intellectual Property Office ("EUIPO") has recently attempted to clarify the position in relation to European Union Trade Marks ("EUTM"s). In March 2022, the EUIPO published a new Case Law Research Report titled "The Distinctive Character of Slogans" ("Report") (dated October 2021). The report compiles case law from the European General Court ("GC"), the Court of Justice of the European Union ("CJEU") and the Boards of Appeal ("BoA"), and aims to identify and analyse the relevant case law and trends related to the registrability of slogan trade marks. The aim is to improve the consistency and predictability of the BoA decisions.
This blog summarises the main take away points raised in the Report, and highlights some of the issues for clients to be aware of when considering the protection of slogans as registered trade marks.
2. Slogans should not be treated differently to other types of trade marks
The term ‘slogan’ is not specifically referred to in the European Union Trade Mark Regulation ("EUTMR") or in the Trade Mark Directive. There is nothing in the legislative framework to suggest that a sign can be refused registration by the EUIPO solely on the ground that it is a slogan.
Article 7(1)(b) EUTMR provides that trade marks which are devoid of any distinctive character may not be registered. This Article applies equally to all trade marks and is not specifically directed at slogan trade marks. In fact, the EUIPO's own Guidelines state that "The Court of Justice has ruled that it is inappropriate to apply to slogans stricter criteria than those applicable to other types of signs when assessing their distinctive character".
However, it is recognised that slogans are often more likely to fall foul of Article 7(1)(b), particularly if the relevant public perceives them as a mere promotional formula rather than an indication of commercial origin of the goods and services covered by the application. According to the Report, the average consumer is not used to making assumptions about the commercial origin of products on the basis of promotional slogans, making it more difficult to establish distinctiveness for this category of trade marks.
3. The Relevant Public
Established GC case law suggests that the level of attention of the relevant public may be relatively low when it comes to promotional indications. This is the case regardless of whether the relevant public consists of average consumers or more attentive specialists. According to the Report "As a slogan only conveys abstract information about the goods and services, it is even less likely that the consumer will take the time to enquire into the various possible functions of the expression, namely, whether beyond its purely promotional meaning, it might also designate a commercial origin".
A slogan which has a vague or impenetrable meaning, or the interpretation of which requires significant mental effort on the part of the relevant public is more likely to be distinctive. This is because consumers would not be able to easily establish a clear and direct link with the goods and services for which protection is sought.
4. CJEU Criteria for distinctiveness
In the Vorsprung durch Technik and Wir machen das Besondere einfach cases, the CJEU set out certain criteria that should be used when assessing the distinctive character of a slogan. According to the CJEU, a slogan trade mark is more likely to be considered distinctive if it is seen as more than an advertising message which praises the qualities of the goods or services. A slogan trade mark may be deemed distinctive if it:
- constitutes 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 in the minds of the relevant public a cognitive process or requires an interpretative effort.
In addition to the above, the CJEU found that the following characteristics of a slogan may assist in a finding of distinctiveness:
- unusual syntactic structures;
- the use of linguistic and stylistic devices, such as alliteration, metaphors, rhyme, paradox, etc.
The above list does come with a health warning through. The Report states that "none of the above factors apply in absolute terms, independently from one another. For instance, the fact that a slogan has a number of meanings does not necessarily mean that it is distinctive."
In addition, the EUIPO Guidelines make it clear that the use of unorthodox grammatical forms must be carefully assessed because advertising slogans are often written in a simplified form, in such a way as to make them more concise and snappier. So the absence of grammatical elements such as:
- definite articles or pronouns (THE, IT);
- conjunctions (OR, AND); or
- prepositions (OF, FOR)
may not always be sufficient to make the slogan distinctive.
5. Conclusion and EUIPO practice going forward
The Report concluded that the BoA's decisions to date are highly consistent with the case law of the GC and CJEU, with only one occasion in the past several years in which the GC disagreed with the BoA's assessment of a slogan trade mark.
The Report reiterated current EUIPO practice, namely that a sign must not be refused as non-distinctive because the Examiner believes it will be perceived as a promotional slogan. Instead, the Examiner has to show that the sign will be perceived only as a promotional slogan and, therefore, it is incapable of distinguishing goods and services, because any secondary trade mark meaning will not be perceived by the public at all.
The Report contained the following conclusions with a view to maintaining consistency in the examination practice of the EUIPO:
- As a general rule, a slogan is only objectionable under Article 7(1)(b) EUTMR when the relevant public perceives it as a mere promotional formula. On the other hand, a slogan is distinctive when the relevant public, notwithstanding the promotional nature of the slogan, perceives it (simultaneously) as an indication of the commercial origin of the goods or services in question.
- It is not sufficient for a sign to be refused as non-distinctive that it will be perceived as a promotional slogan or, even, primarily as a promotional slogan. What has to be established for a refusal is that it will be perceived merely as a promotional slogan and, therefore, is incapable of performing the function of distinguishing the commercial origin of the goods and services.
- A slogan can be registered as a trade mark if it is capable of setting off a cognitive process in the minds of the relevant public which makes it easy to remember and thus to distinguish the applicant’s goods and services from those that have a different commercial origin.
The Report serves as an interesting reminder of the factors to be taken into account when examining slogan trade marks, and whether those types of marks may be registrable before the EUIPO. It also highlights the uphill battle that clients may face in protecting their slogans as trade marks – although slogan trade marks should not be treated differently to any other type of trade marks, their very nature makes them more likely to encounter distinctiveness objections.
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