The plant-based food market continues to grow - from small-scale start-ups to multinational food and drink companies that are diversifying their product ranges, leading to increased competition as businesses race for a share of this fast-growing food category. One way to stand-out from the crowd is to create an original and distinctive slogan, which helps consumers identify the products of one business from those of another.
Swedish company, Oatly AB (Oatly) applied to register their Trade Mark IT'S LIKE MILK BUT MADE FOR HUMANS before the European Union Intellectual Property Office (EUIPO) in March 2019 following an advertising campaign in Sweden and the UK. During examination, an objection was raised as the applied for trade mark was considered to be devoid of any distinctive character in relation to some goods, including “dairy substitutes”.
The examiner considered that the applied for trade mark simply highlighted positive aspects of Oatly's goods, i.e. they are “like real milk but contain ingredients that are more apt for human consumption than real cow's milk”. As such, the applied for mark would be perceived by the public as a laudatory promotional slogan rather than performing the function of trade mark, that is to convey the commercial origin of the goods.
Oatly sought to overcome the objection by relying on a number of arguments, but failed to persuade the examiner that the applied for trade mark contained the minimal level of distinctiveness required for registration. They have since filed numerous appeals, the latest before the General Court.
One argument relied on by Oatly was that the applied for trade mark is intended to be thought-provoking, controversial and surprising and as such, consumers will recognise the mark as an indication of commercial origin. Unfortunately, the EUIPO and the Board of Appeal disagreed.
In the context of the objected to goods, there was a consensus that the applied for trade mark will be “understood unequivocally and without any mental effort, as a mere laudatory and promotional slogan, the function of which is to communicate to the consumer a value statement, highlighting the positive aspects of the goods concerned”.
The appeal before the General Court is pending – whether the decisions of the EUIPO and Board of Appeal will be overturned remains to be seen.
All is not lost – trade mark or slogans which lack distinctive character can ultimately be registerable if it can be proved through filing evidence that the trade mark has acquired distinctive character, usually resulting from long-standing use.
The take away point is that slogans can be difficult to protect, but if they are original and imaginative they can be effective in helping businesses stand out from the crowd and importantly can be registerable as a trade mark.
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