Slogans distinctive ability

Recently, the Court of Justice of the European Union, in Case No. T-253/20, had the opportunity to clarify some important aspects related to the registrability of a promotional slogan as a trademark.

In particular, the issue raised following the filing in the European Union of the word mark “It’s Like Milk But Made For Humans” for classes 18, 25, 29, 30 and 32 by a well-known company operating in the production of oat-based milk substitutes.

The trade mark application had been rejected by the EUIPO on the ground that the sign was regarded by the examiner as having no distinctive character (ex. Article 7(1) .b) RMUE) and therefore unable to convey the consumer to the commercial origin of the products claimed.

In response to the rejection of the appeal brought by the company holding the trade mark application, the   decision was therefore discussed before the European Court (CJEU), which overturned the previous         decisions, establishing that the trademark must be considered as “registrable” since the sign “It’s Like Milk But Made For Humans”, while presenting itself as a promotional slogan, has a minimal distinctive character and therefore susceptible to registration as a trademark.

In support of this decision, the Court of Justice pointed out first of all that the essential function of a trade mark is to enable consumers to identify the commercial origin of the relevant goods and services, that the registrability of a slogan as a trade mark is by no means prohibited by Regulation 2017/1001 and that marks consisting of slogans cannot be subjected to more restrictive criteria than other categories of trade marks. As a matter of fact, “for what concerns marks composed of signs or indications which are, as well, used as commercial slogans, quality indications or expressions inviting to purchase the goods/services to which the trade mark refers, registration is not excluded by reason of such use”.

Finally, the EU Court of Justice also stated that “the mere fact that a trade mark is perceived by the target public as a promotional formula (slogan) and that, in view of its commendatory nature, it could in principle be used by other undertakings, is not in itself sufficient to conclude that that mark is devoid of distinctive character”. The praise or promotional aspect of a word mark does not prevent it from being suitable to ensure that the average consumer can identify the origin of the goods and services designated by it. Consequently, the sign in question can be considered by the target public both as a promotional formula and, at the same time, as an indication of the commercial origin of the goods/services.

In the case in exam, the Court pointed out that the presence of the conjunction “But” at the center of the slogan allows the consumer to perceive a contrast between the first part of the brand “It’s like milk” and the second part “Made for Humans“. Such an adverse link would call into question the common basic idea that milk is a fundamental element of human food, thereby conveying a message which is easily remembered and which, consequently, is able to distinguish the applicant’s products from those having a different entrepreneurial origin.

It follows that, in so far as the target audience perceives the slogan as an indication of commercial origin, the fact that it is simultaneously, if not primarily, perceived as a promotional formula, does not affect its distinctive character and is therefore registrable as a trademark.