3-second cinematic sequence sufficiently distinctive to be a trade mark, says EUIPO Fifth Board of Appeal

Nusret Gökçe, nicknamed Salt Bae (the applicant), is a Turkish chef who owns ‘Nusr-Et’, a chain of steak houses. His art of cooking and preparing meat has become somewhat of an internet sensation [see here and here for some salty videos]. Salt Bae became widely known in 2017 for the way he ‘elegantly’ cuts meat and sprinkles salt. In particular, his fame comes from a viral video, ‘Ottoman Steak’, posted in January 2017 on his Twitter account. It has been viewed 10 million times on Instagram. After that Gökçe was dubbed ‘Salt Bae’ because of his iconic way of sprinkling salt by letting salt fall down on his forearm then spread on the meat. 

In March 2017 the applicant sought to register the following motion mark as an EU trade mark:

The application was for certain goods and services in Classes 25 (clothing, trousers, jackets, overcoats, skirts, suits), 30 (coffee, cocoa, artificial coffee, coffee-based beverages, noodles, macaroni, ravioli, bread, pastry and bakery products) and 43 (services for providing food and drink, restaurants, cafeterias, cafés, canteen services, catering, pubs) of the Nice Classification. 

In October 2017 the EUIPO examiner partly rejected the application to register the applicant’s motion mark as an EU trade mark. In particular, the application was rejected in relation to Class 43, on grounds that the mark would be seen as nothing more than a banal scene of a chef preparing meat with a pinch of salt, and not as a distinctive sign. 

The applicant attempted to submit evidence that the motion mark had acquired distinctiveness through its online uses. However, according to the examiner the evidence submitted for acquired distinctiveness did not support that the motion mark was able to perform its essential function (that of indication of origin) for the goods/services in question. It therefore failed to meet the registration requirement set out under Article 7(1)(b) of the EU Trade Mark Regulation (EUTMR). 

In December 2017 the applicant filed a notice of appeal against the examiner’s decision, claiming that the fame of the Sale Bae would allow the motion mark to function as an indicator of origin. 

The decision of the Fifth Board of Appeal

The Fifth Board of Appeal partially allowed registration for certain goods and services and partially dismissed it for others. 

Distinctiveness

The Board first considered distinctiveness. Whatever the practice chosen for salting a piece of meat, the Board agreed with the examiner that this process is very normal and standard practice within the world of cooking and could not provide any indication of origin for the particular service of providing food. Therefore, the motion mark could not be registered for services that relate to the provision of food in Class 43 of the Nice Classification. However, registration would be possible for the remaining services applied for in that class, that is: services for providing of drink; rental of food service equipment used in services providing food and drink; reservation of temporary accommodation, rental of banquet and social function facilities for special occasions, namely, wedding receptions, conferences and meetings.

Salt Bae

Acquired distinctiveness

The Board then went on to consider Article 7(3) of the EUTMR. In relation to the acquired distinctiveness of the mark applied for, the Board took the view that the applicant had failed to demonstrate that the hand gesture is recognized by consumers of the services applied for. The evidence submitted by the applicant merely showed examples of how the sign is actually used (brochures, magazines, pamphlets etc). 

In relation to the Member States from which the relevant public originates, the applicant submitted the number of followers on social media and views of his videos on YouTube. The Board recognized that it is customary for service providers to use social media and websites in order to advertise/promote their businesses. However, the applicant failed to show consumer recognition and identification of the services. Therefore, it was not possible to conclude with certainty how many viewers actually accessed these websites and what Member States the relevant public originated from. The only thing that was clear is that the sign applied for is used. Nonetheless, this was not sufficient to lift the mark above the threshold of being a merely non-distinctive sign so to be deemed as having acquired distinctiveness for the contested service for which registration was sought. 

The Board then went on to consider whether the mark was originally incapable of performing the function of indicating origin and whether this function was now fulfilled as a result of the use of the mark. 

The identification by the relevant public of the services as originating from the applicant must be the result of the use of the mark as a trade mark which makes it capable of distinguishing the services concerned from those of other undertakings. This assessment is done by inter alia considering the evidence which relates to the market share held by the mark and how geographically widespread and long-standing use of the mark has been. In this regard the Board agreed with the examiner that the evidence was far too insufficient to establish whether this was actually the case. 

The Board therefore held that the application for goods and services in Classes 25, 30 and 43 (in part) of the Nice Classification was permitted. However, the registration for services for the provision of food in Class 43 was rejected, and Article 7(3) EUTMR would not apply in the present case.