Slogans are often used in advertisement, however it is not simple to create an exclusive right on them. They are often not that distinctive and therefore not worth to be protected as trademark. Slogans are usually composed of ordinary words and phrases that are laudatory or calls to action, and usually lacking the basic requirement of distinctiveness as an indication of trade origin that is required for trademark registration.
The recent decision issued by the Intellectual Property Office of Singapore confirmed this assumption.
With a decision issued few months ago, the Intellectual Property Office of Singapore rejected the trademark application for the slogan "PARTY LIKE GATSBY".
In recent times, a company called Arangur UG (haftungsbeschränkt) (the "Applicant") filed an application to register the trademark "PARTY LIKE GATSBY" (Application No. 40202006901U) under classes 41 and 43, namely for hospitality and entertainment services.
In his three rounds of objections, following the Section 7(1)(b) of the Trade Marks Act 1998 (the "Act"), the examiners rejected the trademark applied for registration, given the similarity with the famous novel "The Great Gatsby", which is a novel about a man invited to an extravagant party hosted by the eponymous host Jay Gatsby in the 1920s.
After the second unsuccessful round of examination, the applicant applied for an ex-parte hearing.
During the hearing, the applicant tried to overcome the lack of evidence of use, submitting several prior cases, mainly European, to defend his cause. The arguments can be summarized as follows:
Firstly, it was a misinterpretation of the Office the identification of the word "Party" as noun, which leads to the idea that the applicant services allow consumers to host party, like, indeed, the Great Gatsby. As correctly interpreted, it should have been read as a "verb", which bring the consumer to think that they can attend and enjoy a social situation.
The mark reminds to an idea of entertaining and fun, opposite to the sense of loneliness of the host in the Great Gatsby.
The mark would trigger questions in the consumers about the service ex se.
Notwithstanding the efforts of the Applicant, the IPOS did not accepts the arguments of the applicant.
On the contrary, the trademark office reasoned that, even considered that relevant public might have an idea of "the Great Gatsby" romance and connect it with parties, the mark is unlikely to be perceived as a badge of origin without prior education of the average consumer.
The submission of evidence of use would have helped to overcome the rejection. However, the request remained unheard.
As a consequence, the IPOS maintained the objection and finally rejected the trademark application ruling that the case in object was a typical example of a rejection due to the lack of distinctiveness of the Mark.
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