In Oatly AB v EUIPO the General Court of the EU overturned the earlier refusal of the Fifth Board of Appeal to accept a slogan mark as a trade mark. The General Court found that the slogan possessed the minimum degree of distinctive character required for registration.
Background
The Applicant, Oatly AB is a Swedish producer of oat based dairy substitutes. The company applied for an EU trade mark for the slogan ‘IT’S LIKE MILK BUT MADE FOR HUMANS’ but were refused for goods in class 29 for various dairy substitutes, in class 30 for oat based foodstuffs and in class 32 for beverages. The Fifth Board of Appeal of the EUIPO upheld the refusal on appeal on the basis of a perceived lack of distinctive character under Article 7(1) b of Regulation 2017/1001.
General Court
On appeal, the General Court reconfirmed that:
- the 'laudatory' nature of the mark does not prevent it from being capable of indicating the commercial origin of the goods or services; and
- for the purposes of assessing the distinctive character of slogan marks, it is inappropriate to apply criteria which are stricter than those applicable to other types of signs. A slogan does not have to be striking or imaginative to meet the minimum level of distinctiveness required to be accepted as a trade mark.
Evidence of Public Perception
The General Court held that the evidence submitted by the Applicant, relating to the public perception of the mark from countries where English is widely understood, should have been accepted by the Board of Appeal, as opposed to its restriction of the evidence to countries where English is the official language.
The General Court held that the Board of Appeal had been incorrect in its assessment of the relevant public as a sub-group, namely those who were lactose intolerant, allergic to milk, or vegan. It should have taken into account the wider general public’s perception of the mark.
Distinctive Character
The Board of Appeal had concluded that the first part of the mark (‘it’s like milk’) indicated that the goods were a substitute for milk and the second part of the mark (‘but made for humans’) indicated that the goods were for human consumption. In contrast, the General Court found that the inclusion of the conjunction ‘but’ in the middle of the mark would ensure that consumers can see opposition between the first part of the mark (‘it’s like milk’) with the second part of the mark (“made for humans”) therefore conveying the idea that not only is the product akin to milk, but also the idea that milk is not suitable for human consumption. The General Court held that this challenges the perception that milk is a healthy part of the human diet. The Court also referred to the evidence of controversy and press coverage that arose in response to the mark used as a slogan in the Netherlands, the UK and Sweden where it was believed that the slogan was disparaging of milk.
The Court concluded that, as the Applicant’s mark gives rise to ‘setting off a cognitive process’ in the minds of the relevant public, it is easy for the public to recall. It held that the Applicant’s mark is capable of distinguishing the Applicant’s goods from the goods of other entities and as a result has the minimum degree of distinctiveness required.
Commentary
The case highlights the minimum level of distinctiveness necessary in order for a mark consisting of a slogan to be accepted as an EU trade mark. It is not necessary for a mark consisting of a slogan to be particularly imaginative or striking in order to meet this minimal level of distinctiveness and the case reiterates that it is not appropriate to apply stricter criteria for acceptance to such marks. Rather the slogan must have some feature, beyond conveying a mere promotional statement, which serves to make it memorable to a consumer. In this case, the fact that the mark made a controversial suggestion provoking a thought process in consumers brought it beyond a mere promotional statement.
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