Registrability of slogans in the UK

This case concerns a UK trade mark registration for "LOVE IT, MATCH IT, MIX IT", filed on 30 June 2016, and owned by Akzo Nobel Coatings International B.V. for the following paint related products:

"Paints; coatings; varnishes; lacquers; thinners; coloring matters all being additives for paints, varnishes or lacquers; preservatives against rust and against deterioration of wood; priming preparations (in the nature of paints); wood stains" (in class 2).

Shortly after securing registration, "LOVE IT, MATCH IT, MIX IT" was challenged by Crown Brands Limited on the basis that it should be removed from the register for the following reasons:

• The mark is devoid of any distinctive character in relation to the goods for which it is registered because it sends only the promotional message that the paints consumers love can be matched and mixed for them;
• The mark is a normal way of describing paints, coatings and emulsions which are matched to a chosen/loved colour and then bespoke mixed;
• Use of the mark would be contrary to the law of passing off. This is because Crown Brands claimed earlier rights to "YOU LOVE IT, WE’LL MATCH IT", which it had used throughout the UK since 2011 in relation to paints, coatings for walls, retailing of paint and coatings and paint mixing services. In particular, it claimed to have been used quite extensively in 2012 and 2013.

Crown Brands had taken the view that their own slogan "YOU LOVE IT, WE’LL MATCH IT" lacked distinctive character and was not capable of being a registered trade mark. Following many years of commercial use, they believed they had sufficient goodwill in the name to be able to enforce it against Akzo Nobel.

Crown Brands had some support under the point as to whether the mark should be registered. This is due to the fact that the UK Intellectual Property Office ("UKIPO") initially refused to accept the "LOVE IT, MATCH IT, MIX IT" application on the grounds that it lacked distinctiveness for the painting products listed above. But, following arguments by Akzo Nobel's lawyers, the application was allowed to proceed to registration.

After some deliberation, the UKIPO made it clear that, in accordance with Section 72 of the Trade Mark Act 1994, registration of a trade mark shall be evidence of its validity. The burden is therefore on the party applying to remove the mark to persuade the UKIPO that the registration is invalid. That was Crown Brands in this case. In fairness to both the parties, the examiner said he would consider the case afresh, rather than be bound by the existing decision of the UKIPO which found the mark to be distinctive but only after overcoming the initial objection.

In order to determine whether or not the term "LOVE IT, MATCH IT, MIX IT" was sufficiently distinctive to be registered (and also whether there was a passing off claim in relation to the use of "YOU LOVE IT, WE’LL MATCH IT"), the UKIPO had to assess the case through the eyes of the average consumer. It was held that the average consumer is a person who buys paints or coatings for use in his or her work, e.g. a decorator, or it may be a member of the public buying paints or coatings for DIY purposes. Such consumers are expected to pay an average or ‘normal’ degree of attention when selecting the goods at issue.

The UKIPO examiner had "no doubt that when the contested mark is used in relation to paints and coatings, the average consumer would immediately see that MIX IT describes the process of mixing a paint or coating. In the same relevant context, the words MATCH IT appear likely to be readily understood as referring to matching a colour. When followed by the words MATCH IT, MIX IT, the words LOVE IT, are liable to be understood as referring to the love of a colour, or an article in that colour. In the context of bespoke paints and coatings, these two possible meanings of ‘IT’ effectively amount to the same thing, i.e. the colour you love. The contested mark is therefore likely to immediately convey the message “Love the colour, match the colour, mix the paint/coating.”

This finding did not however automatically mean that the mark lacked distinctive character and could not be registered. But, whilst he could see how the term "MATCH IT, MIX IT" could be viewed by the average consumer as descriptive, and not protectable as a UK registered trade mark, "LOVE IT" appeared to relate to the consumer’s emotional attachment to the desired colour rather than to the goods. Therefore, the mark as a whole could not be deemed descriptive. Whether or not the mark was distinctive though was a totally separate assessment.

It was clear that if the mark was “Love the colour, match the colour, mix the paint (or coating)” it would be understood by relevant consumers as conveying a purely promotional message in relation to the goods at issue (and therefore non-distinctive). Although the mark in issue may be understood as having the same meaning as that term, it is not the same, but rather a compressed statement making it easier to remember. Despite this, the UKIPO found that the mark "LOVE IT, MATCH IT, MIX IT" was not sufficiently distinctive for paints and coloured coatings and would be seen as a promotional laudatory formula for the other goods. The registration was not sufficiently distinctive and was declared invalid for all the registered products. As a result, it would be removed from the register. That was in the absence of evidence of acquired distinctiveness.

In relation to the passing off claim it was held that at the time "LOVE IT, MATCH IT, MIX IT" was filed in June 2016, Crown Brands' name "YOU LOVE IT, WE’LL MATCH IT" was not, by itself, sufficiently distinctive. That meant that Akzo's use of "LOVE IT, MATCH IT, MIX IT" at the date filed could not have amounted to a misrepresentation to Crown Brands' customers or potential customers. Additionally, Crown Brands did not submit sufficient evidence of use of "YOU LOVE IT, WE’LL MATCH IT" without other distinctive elements such as their company name or logo, for the UKIPO to be convinced that their use had educated the public that the non-distinctive slogan had acquired a secondary meaning denoting trade origin.

In conclusion, the registration for "LOVE IT, MATCH IT, MIX IT" was refused for being a purely promotional statement. Crown Brands succeeded in getting the mark removed from the register. They failed in relation to the passing off claim. Based on the evidence they submitted, their mark "YOU LOVE IT, WE’LL MATCH IT" was not yet at the threshold capable of being registered and enforced on its own.

The take away messages are it is worth reviewing periodically the use of brand names which may lack distinctive character or may be descriptive and keeping evidence available, even if the mark is registered. In addition, sales figures and use of a mark without other distinctive elements will be, unsurprisingly, the most persuasive evidence.

Case Ref: Case 0/410/18