For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Monday, 6 January 2014

No Animals Were Harmed In The Making Of This Blog

Stay classy, San Diego!
This post is about slogans and trade mark rights in them.

I recently had the pleasure of watching the sequel to one of my all-time favourite films, Anchorman. Anchorman 2: The Legend Continues is the second outing of Will Ferrell’s moustachioed 1970s newsreader Ron Burgundy. It’s worth watching if you liked the first one, but not nearly as good. Along with a lot of tongue-in-cheek humour and slapstick comedy, the films also feature their fair share of animals. The first film has Baxter, Ron’s dog (Jack Black boots him off a bridge) along with a panda and several Kodiak bears. The sequel adds dolphins and a shark affectionately named Doby. Animal lovers will be relieved to hear that, despite Ron and Doby engaging in a little wrestling, the American Humane Association (AHA) stated in the film’s credits that:
“No Animals Were Harmed In The Making Of This FilmTM

This post examines whether trade mark rights can be claimed in slogans and considers the AHA's prospects of success in registering this one in the United Kingdom or elsewhere in the European Union.

Can trade mark rights be claimed in a slogan?
Yes. But like all other signs, to get themselves registered they need to be distinctive (inherently or otherwise). Generally slogans are considered by courts and registries as primarily promotional messages rather than badges of origin, and so less well equipped to distinguish one trader from another. They’re also obviously at risk of simply describing, in a laudatory manner, characteristics of the goods or services in question.
CJEU Cases C-398/08 P Audi AG v OHIM (VORSPRUNG DURCH TECHNIK) and C-311/11 P Smart Technologies ULC v OHIM (WIR MACHEN DAS BESONDERE EINFACH), already blogged by Jeremy here and here, set out the position in Europe. These cases and the practice at the UK Intellectual Property Office (UKIPO) and the Office for Harmonisation in the Internal Market (OHIM) can be summarised thus: 
  1. In assessing distinctive character, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (Case C-64/02 P OHIM v Erpo Möbelwerk).
  2. Furthermore, although it might be more difficult to establish distinctiveness in relation to slogans because of the perception by the public of them as advertising (“…average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans” [although the case in 2002, is this proposition still valid in 2014?]), there is no special test or principles to apply to them (Erpo Möbelwerk). [If there is indeed no special test or principles, you should probably just ignore all the points below. Evidently there are special considerations, at the least.]
  3. The fact that no one else uses a slogan does not make it automatically distinctive (Erpo Möbelwerk).
  4. The mere facts that a mark is perceived by the public as promotional, and being laudatory might be used by other traders, is not enough in itself to support a conclusion that the mark is devoid of distinctive character (Audi).
  5. A mark may be perceived as a badge of origin even if it is at the same time primarily understood as a promotional formula and this has no bearing on its distinctive character (Audi).
  6. It does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (Smart Technologies).
  7. Multiple meanings, plays on words or marks which are “imaginative, surprising and unexpected” generally endow such marks with distinctive character. The same goes for marks possessing a “certain originality or resonance requiring at least some interpretation by the relevant public” or those which set off “a cognitive process in the minds of the public” (Audi). Elements of “conceptual intrigue” was also mentioned by the General Court in Smart Technologies.
  8. Unusual syntactic structures and/or the use of linguistic and stylistic devices such as alliteration, metaphor, rhyme or paradox may also assist (OHIM Manual B4 1.5.5). Ambiguity may also help (UKIPO Manual 3 1.5).
  9. Examples of slogans which have not passed muster at OHIM and the UKIPO are those which are purely promotional statements (SAY IT WITH CHAMPAGNE for Champagne); straightforward value statements (CARING FOR THE PLANET); inspirational or motivational statements (especially for services) (GO FOR IT for training courses); statements by/about the user of goods/wearer of clothing (HERE COMES TROUBLE on clothing); and political mottos (SAVE OUR EARTH NOW).
The AHA’s slogan
It surprised me to see that the AHA was claiming trade mark rights in “no animals were harmed in the making of this film”. The phrase is very well-known, to the point that it is often parodied (there is a good list here, which includes Harry Potter and the Goblet of Fire: "No dragons were harmed in the making of this movie." and The Flintstones movie: "No dinosaurs were harmed in the making of this movie."). The AHA also has a very low profile in the UK as it presumably does everywhere outside the US.
A whole wheel of cheese?

Leaving that aside, how would the AHA’s slogan fare in an assessment of inherent distinctiveness?

The first thing that strikes you about the slogan is how bland it is. It is a bald, straightforward statement of fact. It tells you what has, or rather hasn’t happened, to the animals involved in the film. An important message no doubt, but nothing more than that. There is nothing imaginative, surprising or unexpected about it, and perhaps that is how it should be given that the message being delivered is a serious one. Furthermore, there’s no originality, resonance, alliteration, ambiguity and so on. No interpretation is required and no cognitive processes engaged. It would appear to tick none of the boxes, and fail the distinctiveness test.

Marks which are not inherently distinctive may nevertheless acquire distinctiveness through use (see the HAVE A BREAK case as an example). But in light of what I say above, I don’t think that the public – at least the British public – see “no animals were harmed in the making of this film” as a badge of origin, and certainly don’t associate it with the AHA (if you were to ask them a leading question about provenance, you’d no doubt get more references to the RSCPA). So that route would fail too.

The AHA did actually apply to register the slogan as a Community trade mark back in 2002. It was in Class 42, for “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services; film certification services.” OHIM rejected it as devoid of distinctive character. After some persuasion, OHIM waived its objection for the underlined goods and services, but upheld it for the remainder. For film certification services, it added that the mark described the content of those services, so was also objectionable as being descriptive. Although the application then proceeded to publication with the limited list of goods and services, the AHA failed to pay the then payable registration fee and the application was deemed abandoned.

An alternative: certification marks?
Only one type of animal was 100%
harmed in the making of this beef
What the AHA’s slogan is really trying to say is that: “the treatment of animals in this film lived up to the standards we have set and expect of good filmmakers. We’re happy, so you can watch easy”. The AHA has certified the film. Accordingly, in the US, the shorter slogan NO ANIMALS WERE HARMED is registered as a certification mark for “Motion picture film production, documentary film production, television show production, television advertisement production and live action show production”. The registration is described thus:
“The certification mark, as used by authorized persons, certifies that the treatment of animals during motion picture, film, television, and live show production conforms to the standards, regulations, guidelines, or specifications developed and published by the certifier.”
It is not possible to apply for a certification mark at Community level (there's a little bit from the IPKat here), but it is in the UK (as permitted by the European Trade Marks Directive) – see section 50 and Schedule 2 of the UK Trade Marks Act 1994, which explain that a certification mark is
“... a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.” 
The proprietor doesn’t use the mark itself, but authorises others to where they meet its standards.

The key prerequisite for obtaining such a mark is that there exist regulations governing the use of the mark, which have to be filed with the application. The regulations must indicate who is authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the procedures for resolving disputes, and so on. Whether this means you have to file one or 100 pages of regulations may depend on which UKIPO examiner considers your application.

Although this would appear to be just the right kind of mark for the AHA, it would still have to satisfy the basic requirements of a trade mark, including distinctiveness. There is a slightly different test for distinctiveness of certification marks, which looks at the ability of the mark to distinguish goods or services which are certified from those which are not (Paragraph 2 of Schedule 2 of the UK Act). But the usual not distinctive and descriptive objections remain. The UKIPO gives “GUARANTEED 100% COTTON” for cotton shirts as an example of an objectionable certification mark, not just because it should be free for traders to use to describe their products but also because it does not indicate that a certification scheme (rather than just an individual trader) is guaranteeing the presence of the characteristic. In my view the AHA’s slogan would fail for the same reason: there’s nothing in it to indicate anyone in particular has certified it, and the UK public would have no idea the AHA was involved.

So, a bit of bad news for the AHA, but at least the animals are all right.

7 comments:

Anonymous said...

This does leave a number of questions, though..

1. who could be said to be the relevant market for goods bearing the mark? Whilst the general public in the UK may not know the AHA or its slogan, those in the film world may and it could probably be argued that they are as much the public as anyone else.

2. Could it ever function as a trade mark? I would say yes, with evidence of extensive marketing. I am not in the film world, so cannot be sure what marketing it uses

3. Have films/tv programmes been forced to remove the slogan where it has been misused?

Darren Meale said...

It looks like the AHA has asserted its rights - against The King's Speech: http://www.techdirt.com/articles/20110205/00552712978/humane-association-trademarked-no-animals-were-harmed-threatens-kings-speech-with-infringement-claim.shtml

My view is that potentially anything can function as a trade mark, especially with enough marketing. That said, from a descriptiveness perspective, how else could a filmmaker describe his or her film as animal friendly without using those words?

A good question on 1, not being a filmmaker I'm not sure I know either!

ex-examiner said...

The credits to the film "War Horse" acknowledge that the Red Cross symbol (which appeared on the sides of some British Army Ambulances) was used with permission, but I don't recall from who. I understand that the Red Cross symbol is owned by a Pharmaceutical company in the US, which begs the question as to whether the film maker would have to get permission from the trade mark owners in all the countries where the film was to be distrubuted where the same mark belongs to different owners in different territories?

Roufousse T. Fairfly said...

The Red Cross symbol is internationally protected pursuant Art. 6ter of the Paris Convention. I think that the authority is ultimately derived from the Geneva Conventions of 12 August 1949.

The Red Cross is mentioned in the US Trademark Examination Guidelines.

Johnson&Johnson's owns grandfathered rights to the Red Cross, but I don't think that these would be much of a nuisance to a film production nowadays, if one believes a case report of WIPO's web site.

If a clearance was sought by the film company lawyers (probably with the American Red Cross), that would have been probably more out of safety rather than from necessity.

Anonymous said...

Red Cross = owned by International Committee of the Red Cross. Quite carefully policed as it is misused in dramas quite often. I remember receiving a training session on its use.

The fact that there may be no other way of describing is really a defence issue, not a protection issue. Is it that different from the use of a geographical name?

ex-examiner said...

Thabks for the red Cross Info. i shall have to read the credits carefully the next time I see "War Horse".

Incidentally, near the end of the film is a scene set in an army field hospital when the Armistice is announced. In the background is what looks like a rack of old UK Patent Office wooden search columns. These were disposed of when the Patent Office moved to Wales circa 1990 (I bought several myself). Some evidently ended up with a theatrical props company as I have seen them in a number of films/TV programmes set in the Edwardian era as office furniture.

Sally Cooper said...

NO ANIMALS WERE HARMED is a
registered trade mark in the USA - looked it up because of a vague memory of an IPKat post a while back that wasn't happy about claim to trade mark rights in slogan under discussion - just can't remember who (back then) was making the claim ....

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':