Mark consisting of advertising slogans in the EU case-law

The mark consisting of advertising slogans is a registrable trademark on condition that it has distinctive character, namely – regardless of its promotional meaning – on condition that it has something that allows the public to perceive it as an indicator of the commercial origin of the designated goods and/or services.

Think Different of Apple or I’m lovin’ it of Mc Donalds are examples of marks consisting of advertising slogans.

With regard to the European Union trademark, article 4 of the European Union trademark regulation n. 2017/1001 provides that:

“A EU trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sound”

Therefore nothing forbids to register as a trademark an advertising slogan.

EU case law agrees that:

“As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded by virtue of such use”

(EU General Court of 29 January 2015 in Case T-59/14, paragraph 19, judgement of the Court of Justice of January 21, 2010 in Case C-398/08, paragraph 35).

The distinctive character of the marks consisting of advertising slogans should not be valued by applying criteria more restrictive than criteria used for other categories of marks (Case C-398/08, paragraph 36). In this regard, the Court stated that:

“Difficulties in establishing distinctiveness which may be associated with word marks consisting of advertising slogans because of their very nature – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness”

(Court of Justice, case C-398/08, paragraph 38; General Court, Case T-59/14, paragraph 21).

First of all, the EU case-law is concerned to give a definition in negative, namely to say which are the requirements that do not necessarily must be present in an advertising slogan in order to be registered as a trademark.

In detail, judgments in question held that firstly

“An advertising slogan cannot be required to display “imaginativeness” or even “conceptual tension which would create surprise” and “so make a striking impression in order to have the minimal level of distinctiveness”

(Court of Justice, C-398/08, paragraph 39; General Court, T-59/14, paragraph 22)

In addition, the Court of Justice states that:

“It must be held that the mere fact that a mark is perceived by the relevant public as a promotional formula, and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient, in itself, to support the conclusion that the mark is devoid of distinctive character” (C-398/08, paragraph 44)

Also, the Court affirms that:

“it should be noted that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposed of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public as a promotional formula and as an indication of the commercial origin of goods and services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character”(C-398/08, paragraph 45).

Two examples of slogans considered sufficiently distinctive

Wet dust can’t fly (European Union Trademark Registration n. 006668073)

The trademark has been registered for:

• 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cleaners and fragrances for carpet, flooring, upholstery and window treatments.
• 7 Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines, power-operated water extractors, and parts and attachments thereof.
• 37 Building construction; repair; installation services; repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors; consultation services in the field of repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors.

Judgment of the General Court, T-133/13, 22.01.2015:

The concept of ‘wet dust’ is literally inaccurate, since dust is no longer dust when it is wet. Consequently, the juxtaposition of those two words gives that concept a fanciful and distinctive character (§ 49);

Consequently, the expression ‘wet dust can’t fly’ calls for an interpretative effort on the part of consumers, who will be unable to associate it immediately with the goods and services in question, since, as has just been indicated, the intended purpose of the goods and services in question is not to ‘wet the dust in order to prevent it from flying’. Furthermore, that slogan exhibits a degree of originality and a certain resonance which make it easy to remember (§ 50);

Finally, with regard to the applicant’s argument that that expression is an advertising slogan which indicates that the performance of the designated products is better than the performance of other products, it must be held that the Board of Appeal was also right to conclude that there was no reason to consider that the expression has any such connotation. Although the slogan is, as the Board of Appeal stated in paragraph 20 of the contested decision, slightly suggestive, there is no evidence to support the specific assumption that those goods and services are superior (§ 52)

Moreover, in any event, as was observed in paragraph 45 above, the laudatory connotation of a word mark does not mean that it cannot, none the less, be appropriate for the purpose of guaranteeing to consumers the origin of the goods or services which it covers (§ 53)

Love to lounge (European Union Trademark Registration n. 008500548)

The trademark has been registered for:

• 25: Clothing, footwear, headgear

Judgment of the General Court, T-305/16, 15.09.2017:

The contested mark conveys an abstract message referring to the interest of potential consumers in relaxing. The Board of Appeal was likewise right in noting that the contested mark requires some cognitive effort on the part of the relevant public. It is a syntactically-correct combination of English words, which can be used in a great number of contexts. Consequently, when the contested mark is used in relation to the goods in question, namely clothing, footwear and items of headgear, the relevant public will have to place that mark in a certain context, which requires an intellectual effort (§ 93);

Furthermore, even though that mark is not highly imaginative, it has a certain originality which is likely to be remembered by consumers. In that regard, the Board of Appeal was right in pointing out that the contested mark is not without a certain elegance, given the clever use of only two nouns and a preposition and the repetition of the letter ‘l’, all of which combined lend a degree of euphony to the mark as a whole (§ 94);

The meaning and the originality of the contested mark will be perceived as an incitement to purchase, but do not constitute a mere piece of information as the applicant claims. On the contrary, the contested mark will enable consumers to identify the commercial origin of the goods at issue. Consequently, that mark has inherent distinctive character (§ 95).

In light of the above, it follows that the mark consisting of an advertising slogan, regardless of its promotional meaning, must have something that allows the public to perceive it as an indicator of the commercial origin of the designated goods and/or services. That is the distinctiveness of this type of mark.