In this article, we discuss a recent EU judgment that dealt with the often-tricky matter of slogan trade marks. The issue was whether a company could register the slogan, "other companies do software, we do support" as an EU trade mark in class 42 for "services relating to computer software, such as consulting, technical, support and maintenance."
The company seeking trade mark protection for the slogan, Rimini Street, Inc, obtained an International Registration for the slogan trade mark other companies do software, we do support in class 42 for the services listed above. But the EU designation of this International Registration ran into difficulties. The European Union Intellectual Property Office ("EUIPO") rejected the EU designation of the International Registration on several grounds:
- The mark followed English grammar rules - an odd objection you may think, good grammar tends to be applauded! See more on this later.
- The mark lacked any original sequence or structure.
- The mark had a clear meaning for English speakers and would be perceived as being a laudatory promotional slogan and an informative statement for users of software created by other companies.
In essence, a lack of originality and distinctiveness objection, as per Article 7(1)(b) of the European Union Trade Mark Regulation ("EUTMR"). Rimini Street decided to take the matter further, by filing an appeal with the Board of Appeal.
The Board of Appeal ("BOA")
The BOA dismissed the appeal and upheld the reasoning of the EUIPO examiner. It said that the slogan "other companies do software, we do support" would be no more than a "promotional formula". It went on to say that there was nothing in the slogan that would enable the public to remember it as a trade mark for the particular service.
The General Court
Rimini Street was not discouraged, it filed a further appeal to the General Court of the European Union ("GCEU"). This court issued its judgment on 15 February 2023, in the case of Rimini Street, Inc. v EUIPO.
The GCEU laid down the law. It said the following:
- slogans can in principle be registered as trade marks and the criteria for slogan marks is the same as for all other marks;
- the slogan must, of course, indicate commercial origin because this is what trade marks do;
- a slogan may indicate commercial origin if it has a certain originality or resonance, requires at least some interpretation by the public, or setting off a cognitive process in consumers' minds. The objection earlier about the mark following English grammar rules should, in our view, be seen in this context. A bit of originality and/or lack of conventionality is required;
- a slogan will not be registrable if it is simply seen as a promotional formula.
- the average consumer is not in the habit of making assumptions about the origin of goods based on slogans. The average consumer does not pay much attention to signs that contain merely promotional information of a general nature.
The GCEU went on to dismiss the appeal. It said that the slogan conveyed a clear message that required no thinking by the public. The company will provide support through advice and technical support such as maintenance and troubleshooting if needed. The public will see this message as nothing more than a promotional formula or a slogan that highlights the positive qualities of the services. The public will not see it as a badge or commercial origin.
Comments and advice
Slogans can form an important aspect of a company's branding, and companies should be encouraged to register their slogans as trade marks. But companies should strive to adopt slogans that are registrable. These will be slogans that are not in any way descriptive of the company's product or service: originality is key. It is also worth bearing in mind that few registries are as strict on the issue of the registration of slogans as the EUIPO.
If you have a slogan that is not descriptive of the goods or services you offer and you want to have it legally protected:
Just do it!
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.