In the recent Court of First Instance (CFI) decision in Ashoka v OHIM [2008] T-186/07 (unreported), Ashoka tried to persuade the Court that the word mark DREAM IT, DO IT! was registrable as a Community trade mark (CTM) for various services, including “promoting and providing professional assistance to individuals for the exchange of socially progressive ideas regarding public entrepreneurship and with pattern changing ideas in a variety of fields including social, economic and environmental disciplines” (Class 35) and “financial assistance to individuals and organisations” in those fields (Class 36). Not altogether surpris ingly, Ashoka failed. The CFI refused to overturn a Board of Appeal decision rejecting the mark, on the basis that it would be perceived as a promotional and advertising slogan and not as an indication of the commercial origin of the services in question.

BACKGROUND

Ashoka applied to register DREAM IT, DO IT! for services in Classes 35, 36, 41 and 45. The Office for Harmonization in the Internal Market (OHIM) examiner refused registration on the grounds that the mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of the Community Trade Mark Regulation (40/94/EC). The Board of Appeal upheld the decision. The Board held, essentially, that the mark transmitted the message that the services applied for would allow the consumer to fulfil his dreams and that it animated the consumer to realise his dreams; it encouraged him to try to achieve them. The Board concluded that the mark functioned first and foremost as an incitement, addressed to the relevant public, aiming to promote the services in question. Therefore, there was no reason to believe that the potential customer would see the words as functioning as a trade mark, i.e., denoting a particular commercial source of the services concerned. The Board held that it followed that the sign applied for as a whole did not have the capacity to communicate to the relevant consumers that the services with which it was to be used were those of the Applicant and could not serve the basic function of a trade mark. As far as the Board was concerned, the exclamation mark at the end made no difference—it was a punctuation mark often used at the end of exhortatory and promotional formulas.

APPEAL TO THE CFI

Ashoka applied to the CFI to annul the Board’s decision. It sought to rely on the European Court of Justice (ECJ) decision in Merz & Krell [2001] C-517/99 ECR I-6959 for the proposition that not only is an advertising slogan not excluded, per se, from registration, but in order to be refused registration under Article 7(1)(b) the slogan must become customary in the current language or in the bona fide and established practices of the trade. According to Ashoka, it was for that reason that the Court took the view that the signs LIVE RICHLY and BEST BUY (in Citicorp v OHIM [2005] T-320/03 ECR II-3411 and Best Buy Concepts v OHIM [2003] T-122/01 ECR II-2235 respectively) were devoid of distinctive character, as the link between those signs and the services covered by the respective applications was obvious. Ashoka suggested that this was not the case for DREAM IT, DO IT!.

CFI DECISION

The CFI agreed that the registration of a mark that consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use (see Citicorp v OHIM). That, however, was as good as it got for Ashoka. The Court stressed that a sign which, like an advertising slogan, fulfils functions other than that of a trade mark, in the traditional sense of the term, is distinctive for the purposes of Article 7(1)(b) only if it may be perceived immediately as an indication of the commercial origin of the goods or services in question. It must enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin. Moreover, the distinctive character of a mark must be assessed: first by reference to the goods or services in respect of which registration has been applied for; and second, by reference to the perception of the relevant public, in this case the general public. In addition, as the mark was composed entirely of English words, account had to be taken of the perception of the average English speaking consumer.

Worse still for Ashoka, in the Court’s view, the mark consisted of two short orders that formed a grammatically and syntactically correct sequence that was logically coherent. It would be noticed immediately by the relevant English speaking public who would see it as an invitation or an encouragement to achieve their dreams and they would understand the message that the services covered by that mark would allow them torealise their dreams. The Court also agreed with the Board that the presence of the exclamation mark added nothing.

Nor was the ruling in Merz & Krell relevant. Ashoka had failed to appreciate that that case concerned a question referred for a preliminary ruling in respect of the interpretation of Article 3(1)(d) of the Trade Marks Directive (89/104/EEC), the wording of which is the same as Article 7(1)(d) of the CTM Regulation. It was not appropriate to limit the scope of Article 7(1)(b) to only those trade marks for which registration had been refused on the basis of Article 7(1)(d) by reason of the fact that they were commonly used in business communications and, in particular, in advertising. Each of the grounds for refusal of registration in Article 7(1) was independent of the others.

The Court als o disagreed with Ashoka that the mark would not transmit any clear and comprehensible information regarding the services to the relevant English speaking consumer. The word “dream” is currently used in English not only to describe dreams and a desire for happiness and success in private life, but also to describe aspirations in public fields including in political, social, economic, environmental and educational disciplines. In the Court’s view, it would be perceived as meaning that those services could help to realise dreams and aspirations. Moreover, the mark would undoubtedly be perceived by the relevant public as a promotional and advertising slogan that would refer to services of various commercial origins. That was even more so as the mark called clearly to mind notions of action and dynamism, by following the first order, “dream it”, with a second, short and urgent order, “do it!” which referred to the idea of a swift achievement of what had just been dreamed of. On account of the positive and attractive characteristics of the concepts of action and dynamism, advertisements often refer to them, even in the context of goods and services for which those concepts do not appear, at first sight, to be relevant.

The Board was therefore fully entitled to find that the mark would not be perceived by the relevant English speaking public as an indication of the commercial origin of the services in question. It followed that the mark was therefore devoid of distinctive character. The fact that other signs that were advertising slogans had been registered as Community trade marks was neither here nor there. Whether a sign may be registered as a CTM must be assessed solely on the basis of the CTM Regulation as interpreted by the Community courts, and not on the basis of previous practice of the Board of Appeal.

COMMENT

Businesses are always keen to capture for themselves punchy advertising slogans and see trade mark registration as the means to do so. The bottom line, however, is that first and foremost the slogan must be able to function as a trade mark; slogans that serve a promotional function not obviously secondary to any trade mark meaning will face objection. Consumers are not in the habit of making assumptions about the origin of products on the basis of promotional slogans. The slogan in the current case might not have had to contend with an examination for descriptiveness under Article 7(1)(c), a hurdle that many slogans fail to clear, but DON’T DREAM IT, DO IT!, as well as being syntactically conventional, was a type of motivational statement that was always likely to founder when applied to services under Article 7(1)(b). UK Intellectual Property Office guidance on the examination of slogans nevertheless suggests that the line between registration and refusal can be a fine one. For instance, it notes that whilst GO FOR IT for training courses would face objection, if the slogan is an “opaque reference” and is in respect of goods, then it might be registrable—JUST DO IT for sports shoes, for example.