What happened?

Establishing that a slogan has the necessary level of distinctiveness for trade mark registration can be difficult. While the test for distinctiveness is the same for slogans as all types of mark, in practice, it's more difficult to show distinctiveness for non-traditional marks such as slogans. This is because the public is not accustomed to viewing such marks as denoting trade origin; usually, slogans will be viewed as purely laudatory or promotional statements, instead.

However, a recent General Court decision confirms that only a minimum degree of distinctiveness is required for a slogan to be accepted for registration. The mark applied for – "IT'S LIKE MILK BUT MADE FOR HUMANS" – was deemed to "convey not only the idea that the goods at issue… are akin to milk and are intended for human consumption, but also the idea that milk itself is not." This challenges the "commonly accepted idea" that animal milk is a key part of the human diet. The mark would therefore set off a "cognitive process" in the minds of consumers, making it "easy to remember". As such, the mark was capable of denoting trade origin, because consumers would be able to repeat the purchasing decision based on the mark. 

The case is interesting as:

• The Court seemingly focused more on the thought process of the average consumer than on whether the mark was original, imaginative, paradoxical, surprising, thought provoking or unexpected, matters often relied upon to try to establish that a slogan is distinctive. Whether this is of any practical significance remains to be seen.
• The Court considered evidence of consumers' reactions to the mark in determining how the mark would be perceived – evidence which had been deemed irrelevant by the EUIPO and Board of Appeal. 

Want to know more? 

Oatly AB, a Swedish producer of dairy substitute products, is known for its lively advertising campaigns. In 2019, Oatly applied to register one of its advertising slogans, "IT'S LIKE MILK BUT MADE FOR HUMANS", as an EU trade mark in classes 18, 25, 29, 30 and 32. The EUIPO refused to register the mark in classes 29, 30 and 32 because it lacked distinctive character under article 7(1)(b) of Regulation 2017/1001.

On appeal, the Board of Appeal considered the slogan's meaning. It noted that the first part of the sign, "IT'S LIKE MILK", meant that the goods were milk substitutes. The second part, "BUT MADE FOR HUMANS", indicated that they were for human consumption. It held that there was no perceptible difference between the conjugation of both parts and the complete slogan.

The Board then considered how the relevant public would perceive the mark. It reasoned that, because the slogan appeals to those who don't consume milk products for physiological or ethical reasons, the sign was promotional rather than indicative of the goods' commercial origin. Commenting that the slogan's length could be inconsistent with the slogan also being a trade mark, the Board concluded that the sign was devoid of any distinctive character.

Oatly's appeal was upheld by the General Court. First, the General Court explained that, if the relevant public immediately perceived the sign as indicating the goods' commercial origin, then the promotional slogan could still have the distinctive character needed to be a trade mark. Second, the General Court reconsidered the Board's assessment of the slogan's meaning. It agreed with the Board's interpretation of each part but explained that the sign also challenged the "commonly accepted idea" that animal milk is a key part of the human diet. Evidence that the sign had provoked controversy among animal milk producers in the Netherlands, Sweden and the UK (and even been banned in Sweden) for possibly suggesting that animal milk is not suitable for human consumption supported the Court's conclusion. 

The General Court therefore found that the mark set off a "cognitive process" in the minds of the relevant public. It was "easy to remember" and capable of distinguishing Oatly's goods from goods with another commercial origin. On this basis, it was registrable as a trade mark.

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To discuss the issues raised in this article in more detail, please reach out to a member of our Brands & Advertising team.