MINIMALISTIC SLOGAN WILL NOT BE GRANTED PROTECTION IN EUIPO
It is relatively rare to find trademarks containing marketing slogans which are both distinctive and suitable for obtaining a protection right for a trademark. However, obtaining an absolute right to such a mark is not impossible, in particular the Industrial Property Law Act of 2000 (i.e. Journal of Laws of 2021, item 324) or the Regulation of the European Parliament and of the Council on the European Union trademark (2017 / 1001 of June 14, 2017) does not exclude such marks from registration. One of the last attempts to obtain a right of protection for such a trademark resulted in a judgment dismissing the applicant’s complaint on EUIPO’s decision.
JUDGMENT OF THE GENERAL COURT (THIRD CHAMBER) OF 19.01.2022 IN CASE T 270/21 – PURE BEAUTY
The applicant applied for protection for the word and figurative mark PURE BEAUTY for goods in class 3 (cosmetics and care products) and class 21 (make-up applicators). EUIPO refused protection due to the mark’s lack of distinctive character and descriptive character. According to EUIPO, a mark containing the slogan PURE BEAUTY in its wording, put in a simple graphic form, will be perceived by the recipients only as a praising reference to goods labelled by this mark and will thus be perceived as a marketing slogan, and not as a sign distinguishing the commercial origin of the goods.
In its judgment, the court agreed with EUIPO and also pointed out that the marketing slogan may be part of the trademark as long as the mark itself is “original and expressive”, has a rich graphic layer, does not use “worn” decorative elements (in this case, the white horizontal line above word elements). In the opinion of the Court, the very selection of the font, the equal size of all elements and the simple arrangement of them in the mark also did not benefit the mark’s distinctiveness.
Moreover, the Court rejected as unexamined the applicant’s claims concerning the need to keep the mark in such a minimalist form. In the opinion of the Court, the Applicant has not proved that the recipients of goods from the cosmetics industry were used to such minimalist trademarks and that they identified them with the designation of origin of the goods.
WHAT KIND OF SLOGAN HAS A CHANCE TO BE PROTECTED?
Based on the jurisprudence and the decision-making practice of EUIPO, it is possible to articulate a few guidelines increasing the chance of obtaining protection for a trademark with a marketing slogan. In our opinion, it will be helpful to:
- use of a rich graphic design, font styling, different sizes of individual elements;
- ensure originality of the slogan;
- avoid value words in a slogan like: better, faster, more;
- avoid words which are specific to the goods covered by the application (such as the word beauty for cosmetics).
LEGAL OPINION BEFORE APPLICATION OF THE MARK
Many entrepreneurs, before deciding to invest in a specific marketing slogan, seek legal advice on the potential protection of such a slogan as a trademark. Such action allows you to protect yourself from wasting time and money on promoting a specific slogan, if it then turns out that it is not possible to obtain a protection right for it. A legal advisor or a patent attorney is able to determine the chances of obtaining protection for a given mark on the basis of the accumulated knowledge, experience as well as decision-making and jurisprudence practice.
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