Why is it difficult to register a pay-off as a trademark?
By their nature, slogans convey an advertising or laudatory message which, as such, may not be able to provide information about the origin of a product or service and therefore fulfill the function of the trademark.
In fact, according to the European jurisprudence, the consumer is not used to formulating hypotheses on the commercial origin of products on the basis of promotional pay-offs and, furthermore, the level of attention is low in these cases, regardless of the type of goods and the specialization of the target public (*).
A slogan has a distinctive character when it is sufficiently inventive, original or surprising, triggers a cognitive process in the public’s mind or requires an interpretative effort (e.g., it contains an allusion, pun, unusual syntactic structures, etc.). These characteristics make it memorable and recognizable and, therefore, distinctive for the public, who will not perceive the pay-off only as a mere laudatory formula (21/01/2010, C-398/08; 13/04/2011, T-523 /09).
These are the criteria established by law, but a few concrete examples of recently rejected trademarks (the majority) and successfully registered trademarks in the EU and Italy will be presented below.
European Union
Examples of rejected trademarks
The trademarks MOINS DE MIGRAINE POUR VIVRE MIEUX and WENIGER MIGRÄNE. MEHR VOM LEBEN. (08/07/2020, T-697/19) (in English, “LESS MIGRAINE FOR A BETTER LIFE”) with reference to goods in classes 16 (printed material relating to the treatment of migraine) and 44 (information relating to the treatment migraine) have been rejected for lack of distinctive character.
The Court of Justice concluded that the pay-off was not unusual from the point of view of the grammatical rules of the local languages, the expression did not convey any originality and did not require an effort of interpretation for the consumer.
Similarly, the EUIPO Board of Appeals has rejected the registration of the pay-offs HEALTHIER DOGS, HAPPY LIVE (27/02/2023, R2097/2022-4), BEYOND THERAPEUTICS (10/03/2021, R 2317/ 2020-4), and ENABLING ANYWHERE CARE (02/12/2020, R 1635/2020-5), all with reference to class 5, for being simple promotional formulas.
Examples of registered trademarks
Differently from the above-mentioned pay-offs, the slogan IT’S LIKE MILK BUT MADE FOR HUMANS (01/20/2021, T-253/20) has been considered distinctive with reference to products in classes 29, 30 and 32.
The Court of Justice concluded that in this case the consumer makes an interpretative effort in reading the sentence, perceiving a contrast between the first part of the trademark (IT’S LIKE MILK) and the second (MADE FOR HUMANS), questioning the common idea according to which milk is an essential element of human nutrition: the formulation of the sentence disorientates the consumer and the intrinsic message of the slogan makes it recognizable and, therefore, distinctive.
Furthermore, the trademarks BAKE FOR HEALTH (No. 018348037) and DNA4YOU (No. 017931880, R 1469/2019-4) have been successfully registered, both considered to be sufficiently original and inventive with reference to products in class 5.
Italy
The Supreme Court has recently ruled on the matter (order No. 37697 of December 23rd, 2022), clarifying that local regulations can allow the registration of slogans as trademarks. However, the pay-off “LA TUA PELLE MERITA DI ESSERE TRATTATA BENE” (English: “YOUR SKIN DESERVES TO BE TREATED WELL”) for cosmetic/pharmaceutical products has not been considered distinctive.
Actually, the tendency of the Italian Patent and Trademark Office seems to be more restrictive than in the past in assessing the distinctiveness of slogans, also with reference to trademarks in English, evidently now considered better known by local consumers.
In fact, the following Italian designations of international trademarks have been rejected: MEDIQ. COMMITTED TO YOUR CARE (No. 1144253), REVOLUTIONIZING THE ORTHOPEDIC SUPPLY CHAIN (No. 1596093), HEALTH OF JOINTS IS IN RELIABLE HANDS (No. 1466670), ORTHO TECHNOLOGY INVENTED HERE (No. 1587216) in classes 5 / 10.
However, the Italian trademarks, MUOVITI RESPIRA VIVI (No. 302018000027175) (English: MOVE BREATHE LIVE) and CONNETTITI AL BENESSERE (No. 302018000027170) (English: CONNECT TO WELLNESS) have recently been registered in class 5.
Protection of slogans through copyright
Slogans can also be protected by copyright, if they are sufficiently “original”. In practice, however, the judicial cases of rejection are certainly more numerous compared to those which ended with an outcome in favour of the protection of the pay-off through copyright law.
Conclusions
The protection of the slogan as a trademark is feasible, but obtaining the registration of the trademark can be complicated both in the EU and in Italy.
In these cases, it is essential to build the best filing solution that takes into account the nature of the pay-off, its application and the possible expedients that allow the trademark to be registered.
We remain at your complete disposal to provide you with our best strategic advice in this regard.
(*) As also reported in the EUIPO study “Case-law Research Report – The Distinctive Character of Slogans”, published in March 2022 and available at the following link. It is a collection of the General Court, the Court of Justice and the EUIPO Commission of Appeals, prepared with the aim of identifying and analyzing the jurisprudence and trends in the field of slogans to improve consistency in decision-making processes.
