Katjes Fassin GmbH + Co. sought to register ‘THE FUTURE IS PLANT-BASED’ as an EU word mark in September 2020. This mark was to cover goods in classes 5, 30 and 32 with its primary focus on food supplements, vitamins, confectionary, and additives for beverages. The EUIPO refused registration, finding the slogan lacked distinctive character.
The EUIPO noted that positive aspects of the goods were being emphasised by the mark, which suggested they were produced on a plant basis and represented the future of human nutrition. The examiner refused the mark on the basis that the goods might contain plant components and therefore it would be purely laudatory, i.e. simply expressing praise for plant-based products.
The applicant, Katjes Fassin GmbH + Co., appealed the decision. The Board of Appeal noted that to assess the distinctive character of a trade mark, regard needed to be had to the goods and services for which registration was sought, as well as to the relevant public’s perception of the mark. They stated that applications are not to be assessed independently of the goods applied for but rather ‘strictly and exclusively’ in connection with those goods.
The relevant public
Both the applicant and the Board acknowledged that the sign consisted of English words and therefore, the perception of English-speaking consumers, namely in Ireland and Malta, had to be taken into account.
The applicant argued that the goods were primarily targeted at the general consumer, who pays little attention when purchasing goods, while also targeted at the specialist public, who affords greater attention when purchasing goods. While the Board found that the nutritional supplements in Class 5 were targeted at both the general public and specialists such as dieticians, there would be an increased level of attention from consumers who would have to carefully consider which foods and supplements were appropriate for their specific needs.
The increased level of attention of consumers, when it comes to purchasing dietary supplements, has already been considered and affirmed in case law. Regarding goods in Class 30, the Board found that these were primarily inexpensive foodstuffs for everyday consumption and therefore agreed that they targeted the general public. The same stance was taken for the brewing products in Class 32.
The distinctive character of a slogan
The Board acknowledged that ‘an advertising slogan or promotional expression is accorded distinctive character if it can be perceived by the relevant public both as a purely promotional formula and as an indication of the commercial origin of the goods or services in question.’ It noted that while a slogan is not required to be imaginative or memorable, these characteristics are likely to positively impact its distinctive character. In contrast, if a mark indicates a characteristic of the product relating to its market value, rather than providing an indication as to the commercial origin of the product, it may lack distinctive character.
Taking all of that into consideration, the Board found that the mark directly conveyed the message that ‘plants are the basic stone of the future.’ The Board considered the slogan with regard to its two main elements: ‘plant-based’ and ‘future’. The ‘plant-based’ element was found to indicate that the goods were of plant origin. The applicant did not dispute this and contended that the term ‘plant-based’ on its own could be considered descriptive of the goods.
On the ‘future’ element of the mark, the applicant argued that ‘future’ can’t be translated into the English equivalent of ‘forward-looking’ and suggested that ‘future’ gave it distinctive character as the noun was not further specified as to its use. Therefore, it was subject to the consumer’s interpretation. The applicant argued that the sign had originality and simplicity that enabled it to be easily and instantly memorised by the relevant public as an indication of the goods’ origin. However, the Board considered ‘future’ to suggest that the plant-based products were future-oriented and that this made the slogan laudatory.
According to case law, a sign is considered laudatory when it praises specific characteristics which are directly assigned to the goods or services but also includes praises of abstract characteristics.
The Board found that the slogan would be perceived by the public to be ‘exclusively’ factual, i.e. it relates to plant-based foods to which the future belongs. It held that the slogan did not go beyond being a mere factual statement and therefore, it was unable to fulfil the essential function of a trade mark, i.e. to be an indication of origin.
It was determined that the slogan applied for contained ‘nothing more than the purely promotional statement that foodstuffs of a plant nature are the products of the future or that such foodstuffs belong to the future’ and that this meaning was ‘obvious’ and ‘immediately evident.’ As a result, the appeal was considered unfounded, and the application was refused.
This case reiterates the EUIPO’s approach when considering if a slogan should be accepted as a trade mark. To show that a slogan has distinctive character, it must be:
- A purely promotional formula, and
- An indication of the commercial origin of the goods/services
Where a slogan fails to indicate origin, it will lack distinctive character.
While this requirement is no stricter than that for more traditional trade marks, slogans may find it harder to indicate origin as they are at a higher risk of being descriptive or non-distinctive due to their inherent nature.
Choosing a memorable and/or imaginative slogan may also assist brand owners in successfully making it through the application stage. Brand owners should keep these principles in mind when trying to register slogans as trade marks.
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