The General Court of the European Union recently refused to allow registration of the “BECAUSE THERE IS NO PLANET B” mark for cosmetic products, stationery and other accessories, holding that it lacked the distinctive character required for the general public to identify it as a trademark.
One of the essential functions of a trademark is to identify the commercial origin of products and services. The exclusivity granted to the trademark owner is conditional upon the capacity of the mark in question to differentiate between different companies and services on the market.
Promotional slogans are one of the most commonly used tools in marketing and advertising, their purpose being to create an idea relating to some characteristic of the product or company in the mind of the consumer. Top of Form
In terms of whether an advertising slogan can validly function as a trademark, the Spanish courts have reiterated that, provided the expression used enables the public to associate it with a business origin, there is no impediment to granting the slogan validity as a trademark.
Indeed, if we look at some of the most famous slogans, it is hard for these often witty promotional lines or expressions not to be associated in consumers’ minds with the company or products behind them. For example, it is hard to get away from the commercial origin of popular slogans such as: “I’m loving it”, “because you’re worth it”, “just do it” or “think green”, which are also registered trademarks.
Therefore, advertising slogans, beyond the mere advertising message they are created to carry, can allow the public to identify the commercial origin of the products and/or services offered, thereby fulfilling the essential function of a trademark.
In many cases, the reality is that the commercial origin attributed to a slogan comes from the previous and intensive promotional use of the sign in the market, giving it what is known as “acquired distinctiveness”. In this case, when applying to register the slogan, the owner should submit evidence of the effective recognition of its commercial origin by the public, which will give it the minimum distinctive character required for its acceptance as a trademark.
Nevertheless, while a great many advertising slogans are registered as trademarks, the fundamental distinctive nature of a trademark is not recognized in all cases, with the Spanish courts having refused numerous applications for registration due to the incapacity of the slogan to validly function as a trademark.
We refer below to some of the most recent judgments analyzing whether a number of specific slogans met the minimum distinctive character requirement stipulated in article 7(1)(b) of the Regulation, as well as some of the specific reasons giving rise to decisions where the arguments and conclusions put forward differ greatly.
In terms of applications upheld, we refer to the Judgment of the General Court (GCEU) of 20 January 2021 in case T-253/20, in which the court, in applying a different criterion to that put forward by the EUIPO, upheld the validity of the “IT’S LIKE MILK BUT MADE FOR HUMANS” mark, considering that, when taken as a whole, the slogan sets off a cognitive process in the minds of the public making it easy to remember, thereby giving it the minimum degree of distinctive character required.
In contrast, in its judgment of February 15, 2023 in case T-204/22, the GCEU refused the application of the “OTHER COMPANIES DO SOFTWARE WE DO SUPPORT” mark in respect of services relating to computer software. In this case, the court upheld the EUIPO’s decision, stating that the expression would be perceived as a mere promotional formula, devoid of the originality or resonance required in order to be associated with a specific commercial origin.
The most recent judgment relates to the application made by the Spanish company ECOALF for the “BECAUSE THERE IS NO PLANET B” mark to cover products such as cosmetics, stationery items, accessories and bottles.
In its judgment of September 13, 2023, (case T-324/22), the GCEU upheld the decision by the EUIPO’s Board of Appeal and refused the application to register the “BECAUSE THERE IS NO PLANET B” mark, since it considered the mark to be devoid of the distinctive character required.
In its ruling, the court highlighted that the expression in question was previously used by the climate change movement as a slogan with an “evident promotional meaning” that would generate a “clear, unequivocal and easy to understand” association for consumers in relation to the environment, which would prevent it being interpreted as an indicator of the business origin of the products.
It is worth noting that, while the court itself has established that the criteria for assessing the distinctiveness of this type of mark cannot be stricter than those applied to other marks, the fact is that, due to their very nature, access to registration of these marks is very limited, with applications requiring particularly rigorous analysis, having regard to both the originality of the mark and the message created in the mind of the consumer by the proposed slogan.
Marta González Aleixandre