In 2001 the General Court (then known as the Court of First Instance) stated in the DAS PRINZIP DER BEQUEMLICHKEIT case (T-138/100) that it is inappropriate to apply criteria to slogans that are stricter than those applicable to other types of sign.
Nevertheless, many applicants still face an uphill battle when trying to register slogans as trademarks. This is likely because slogans are often considered as being purely laudatory advertising. A recent case shows that while slogans may face a more difficult road to registration, they can get there in the end.
On 14 March 2019 Oatly AB filed an EU trademark application for the slogan IT'S LIKE MILK BUT MADE FOR HUMANS, chiefly protecting, among other things, dairy substitutes, food products, beverages, and food products made from oats. Notably, this application did not seek protection for milk made from humans (ie, breast milk).
EUIPO and Boards of Appeal
On 9 April 2019 the EU Intellectual Property Office (EUIPO) issued a provisional refusal of the application with regard to these goods, stating that pursuant to the EU Trademark Regulation (2017/1001), the mark was inherently non-distinct and possibly descriptive for at least one of the languages of the European Union.
While Oatly AB argued against this refusal, the EUIPO and later the Board of Appeals disagreed and maintained the decision. The Fifth Board of Appeal stated that:
- the first part of the mark applied for (ie, "it's like milk") indicated that the goods were or contained milk substitutes; and
- the second part of the mark (ie, "but made for humans") indicated that the products would be for consumption by humans.
The Board of Appeal also considered the applied-for mark to be a laudatory promotional slogan.
Taking the matter higher, Oatly AB appealed before the General Court. With its decision of 20 January 2021, the General Court considered that the inclusion of the word element "but" in the slogan would lead consumers to perceive an opposition of sorts between the first and second halves of the mark:
As a result, the mark applied for conveys not only the idea that the goods at issue, which are foodstuffs, are akin to milk and are intended for human consumption, but also the idea that milk itself is not . . . . The mark applied for thus conveys a message which is capable of setting off a cognitive process in the minds of the relevant public making it easy to remember.(1)
As such, the General Court judged that the slogan IT'S LIKE MILK BUT MADE FOR HUMANS applied for by Oatly AB was sufficiently distinctive to be registered as an EU trademark.
For further information on this topic please contact Jennifer Kepler at GEVERS by telephone (+32 2 715 3711) or email ([email protected]). The GEVERS website can be accessed at www.gevers.eu.
(1) IT'S LIKE MILK BUT MADE FOR HUMANS (T-253/20), sections 44–46.