Nothing more than Empty Words: The Difficulty with Registering Slogans as Trade Marks in the EU

Companies continue to face difficulties in achieving EU trade mark protection for their slogans. In separate recent decisions of the EU General Court, two trade mark applications relating to advertising slogans were rejected on the grounds that the marks lacked the ‘distinctive character’ required to be registerable under Article 7(1)(b) of Regulation 2017/1001. These two decisions join a long list of case law rejecting similar applications.

‘Distinctive character’ is assessed by reference to the goods or services in which the registration has been applied for, and the relevant public’s perception of the mark. For non-traditional trade marks – including advertising slogans – the ‘public perception’ test often proves fatal.

Slogan: “Sustainability through quality” (T-253/22)

On 29 November 2019, Groschopp AG Drives & More – a German car manufacturer – sought to register the word sign “Sustainability through quality”. The application was rejected on 23 March 2020, on the basis that the mark lacked distinctive character. This was appealed up to the General Court.

On appeal, the applicant argued that the case law is clear that an advertising slogan has ‘distinctive character’ if, beyond its purely advertising message, the slogan is perceived by the target public as an indication of the commercial origin of the goods and services – which, it argued, was the case here. Further, the applicant suggested that it would be implausible to suggest Audi’s registered slogan – “advance by technology” – has ‘distinctive character’, and “sustainability through quality” does not.

The General Court though rejected the appeal. In its view, the applicant’s slogan merely formulated a general message applicable to all undertakings that sustainability passes or must involve a quality product or service and that those products or services are based on the principle of sustainability.

Further, the expression “sustainability through quality” will be perceived by the relevant public exclusively as a promotional formula, rather than an indication of commercial origin.

Slogan: “Other companies do software, we do support” (T-204/22)

Rimini Street, Inc. submitted an international registration to the WIPO designating the EU on 30 September 2020 for the slogan “Other companies do software, we do support”. The EUIPO again rejected the application on distinctiveness grounds. The case was appealed to the General Court.

The applicant argued that the contested slogan was distinctive because it left a number of questions unanswered, including the manner of “support” and the undertakings to which the expression “other companies” refers. As a result, in their view, the slogan conveyed a vague meaning and, consequently, a message capable of triggering a cognitive process among members of the relevant public. The slogan was therefore memorable and possessed distinctive character.

The General Court, however, was not convinced. In their view, the combination of common English words in a single sign (e.g., “do” or “other companies”), conveys a clear and unambiguous message which is immediately perceptible and does not require any effort of interpretation on the part of the average consumer. The meanings proposed by the applicant were neither immediately plausible nor immediately perceptible to the average consumer.

The slogan therefore lacked originality or resonance requiring at least some interpretation by the relevant public or triggering a cognitive process in the minds of that public. It also was not capable of alerting consumers to the commercial origin of the services in question. In other words – it too had no distinctive character.

Comment

These two cases are yet another warning for brand owners to try to develop distinctive slogans if they are going to seek to register their slogans in the EU. In particular, they should ask themselves:

1. Is the slogan clearly capable of indicating to a consumer the commercial origin of the goods or services in question?
2. Does the slogan display originality or resonance – requiring at least some interpretation or cognitive process? It is clear from these recent decisions that common phrases do not meet this standard.
3. Does the slogan constitute a play on words and / or elements of intrigue that can be perceived as imaginative, unexpected, or require interpretative effort? Only extremely creative slogans will have realistic prospects of succeeding to registration without extensive evidence of prior use.

By Simon Casinader and Maya Ffrench-Adam