It is well established that slogans should not be subject to stricter criteria than any other types of trade mark (e.g. brand names, logos etc.) when it comes to assessing whether the slogan is registrable as a trade mark (and, specifically, whether the mark is sufficiently distinctive to function as a trade mark). This point has been confirmed numerous times in UK and EU trade mark decisions.
The same issue was also specifically addressed in the EUIPO’s recent report titled “The Distinctive Character of Slogans”, which identified factors indicating that a slogan is sufficiently distinctive to be registered as a trade mark:
However, the prevailing view still seems to be that consumers are not used to seeing slogans as badges of origin, because they tend to be generic/neutral statements, in the same way that they are used to seeing brand names and logos as badges of origin. As a result, it seems to me that slogans are in fact treated differently from other types of trade marks.
This issue arose recently when a beverage company sought to register the slogan “TAKE FIVE” as a trade mark in the EU covering mineral waters and other non-alcoholic drinks. The Examiner refused the application (and the Board of Appeal agreed with her decision) on the basis that the trade mark was insufficiently distinctive to function as a trade mark.
One of the points emphasised by the Board of Appeal was that “The public will understand that the expression is an invitation to potential customers to take or buy products in a quantity of five. The invitation conveyed could also refer to a variety of five different types or flavours sold in one pack. Such invitations to take or buy are commonplace. The present sign is a direct, obvious and also widely used advertising statement with “five” being used in the sense of a quantity specification. The public is familiar with receiving such form of advertising messages.”
This decision raises a couple of problems.
First, I would argue that the phrase “TAKE FIVE” has at least three potential meanings, i.e.: (a) an invitation to take five of something (the meaning taken by the Board of Appeal); (b) a slang/casual way of saying ‘to take a break’ (i.e. take five minutes); and (c) to make a fifth attempt (i.e. directing/filing terminology). On that basis, the “TAKE FIVE” trade mark satisfies at least one of the factors in the EUIPO report (i.e. the mark has a number of meanings), which should tend to indicate that it is sufficiently distinctive to be registrable.
Second, the decision indicates that the EUIPO does in fact apply stricter scrutiny to slogans than to brand names when it comes to assessing distinctiveness for the purposes of registrability. The same beverage company, around the same time, successfully registered the brand name “TAKE FIVE HARD SELTZER” as a trade mark in the EU covering hard seltzer. The application was accepted, even though the words “HARD SELTZER” are directly descriptive of the only good/product covered by the application. It follows, therefore, that the only element of the phrase enabling it to function as a trade mark (i.e. the only distinctive element) are the words “TAKE FIVE”. The main distinction appears to be that “TAKE FIVE HARD SELTZER” was perceived as a brand name, whereas “TAKE FIVE” was perceived as a slogan.
The key point to take away is that the process of securing trade mark registration is not always straightforward. There are multiple factors to take into account and as a result decisions can be inconsistent and outcomes uncertain. To give yourself the best shot at success the first time around, take advice in advance so that you can assess the issues/risks involved and the likelihood of a successful application before you decide to go ahead.
Briffa are experts in trade mark law and practice. If you would like to arrange a free consultation, please contact us on email@example.com.
Written by Éamon Chawke – Partner
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