“TAKE FIVE” – the EUIPO Board of Appeal maintains that the slogan is not sufficiently distinctive for registration

From time to time, this Kat receives queries from clients in relation to the registrability of slogans as trade marks.  The Board of Appeal of the European Union Intellectual Property Office (EUIPO) in its recent decision refused a trade mark application for the slogan “TAKE FIVE” in Class 32 (Case R 664/2022-1).   

 

Recap: Are slogans treated differently than other types of marks? Well, NO… but…

 

According to the Collins English Dictionary, a slogan is “a short phrase that is easy to remember”, and is “used in advertisements… who want people to remember what they are saying or selling”.  A trade mark consisting of a slogan therefore usually conveys a promotional message in connection with the applied-for goods and services. 

 

It is widely recognized that the assessment of the distinctive character of slogans is not subject to stricter criteria than the assessment of other types of trade marks.  This was specifically mentioned in the EUIPO’s comprehensive report titled “The Distinctive Character of Slogans” (dated October 2021) issued in March 2022 (the Report).  The difficulty therefore comes down to the ability of the slogan to serve as a badge of origin because it often consists of “origin neutral” phrases.  This is usually the main reason why many applications for slogan marks are rejected, pursuant to Article 7(1)(b) of the EU Trade Marks Regulation (EUTMR).  As mentioned in the Report, the average consumer is not used to making assumptions about the commercial origin of products on the basis of promotional slogans. Importantly, the level of attention of the consumer is generally low when it comes to promotional slogans.     

 

Quite helpfully, the Report identified various non-exhaustive factors laid down in case law which may serve to establish distinctiveness of a slogan:-

1. The mark has a number of meanings;
2. The mark constitutes a play on words;
3. The mark introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected;
4. The mark has some particular originality or resonance, and/or triggers in the minds of the relevant public a cognitive process or requires an interpretative effort;
5. The mark has unusual syntactic structures and/or linguistic and stylistic device such as alliterations, metaphors, rhymes.    

 

Examples of slogan marks which have been found sufficiently distinctive include “Wet dust can’t fly (T-133/13), “Love to Lounge” (T-305/16) and “It’s like milk but made for humans” (EU:T:2021:21,  reported by the IPKat here)

"It's like milk but made for Kats"

 

EUTM application for TAKE FIVE

 

Studio Beverage Group, Inc. filed an EU trade mark application for TAKE FIVE (no. 018495362) covering the following goods in class 32: “Mineral waters; flavored mineral water; Carbonated mineral water; Non-alcoholic drinks”.

 

After issuing an objection to the application and considering the applicant’s submissions, the examiner refused the application entirely by decision of 22 February 2022, in accordance with Article 7(1)(b) in conjunction with Article 7(2) EUTMR. 

 

In her decision, the examiner was of the opinion that the relevant public would perceive the mark as a promotional laudatory slogan, the function of which is to communicate a motivational statement for buying five units of the goods in question.  Further, the examiner concluded that the relevant public would not tend to see in the sign any indication of commercial origin.  The sign could originate from any provider or be attributed to any provider, for as long as the consumer is unable to create a link to a specific supplier in consequence of extensive use.  The sign would therefore be perceived by the relevant public primarily as a promotional message, based on its inherent meaning, rather than as a trade mark.   

 

Studio Beverage Group, Inc. filed an appeal requesting that the decision be entirely set aside. 

 

The Board of Appeal decision

 

The Board of Appeal issued a decision on 1 September 2022 dismissing the appeal.  The Board held that “MARK FIVE” lacks the requisite distinctive character within the meaning of Article 7(1)(b) EUTMR.  Echoing the view of the examiner, the Board considered the following:-

 

The Relevant Public - The relevant public are end consumers of non-alcoholic drinks and mineral waters, and the sign has to be assessed by reference to the English-speaking public because it consists of English words.   The level of attention of the public is relatively low when it comes to promotional indications. 

 

Distinctive Character – The Board held that the assertion of the applicant that the sign is distinctive as it does not describe the goods claimed is unfounded:-

• The public will understand that the expression is an invitation to potential customers to take or buy products in a quantity of five.  The invitation conveyed could also refer to a variety of five different types or flavours sold in one pack.  Such invitations to take or buy are commonplace.
• The present sign is a direct, obvious and also widely used advertising statement with “five” being used in the sense of a quantity specification.  The public is familiar with receiving such form of advertising messages. 

As a result, the word combination “TAKE FIVE” cannot be regarded as capable of serving as an indication of the commercial origin of the applied-for goods.  The relevant public will see in the word sequence exclusively a general laudatory advertising statement and an appeal to potential customers to buy.    

 

Thoughts

 

If one were to look at the sign “TAKE FIVE” as a slogan or promotional statement, the message conveyed by this expression is very direct and simple.  There is no play on words nor is there any unusual syntactic structure.  As such, the decision of the Board of Appeal makes sense from this perspective.  

 

This being said, this Kat cannot stop wondering if the examiner and the Board jumped into thinking that the sign “TAKE FIVE” is a slogan.  Let’s take a closer look at the “TAKE FIVE” hard seltzer marketed by Studio Beverage Group in the image below.   

 

It seems quite obvious that “TAKE FIVE” is the brand name of such products and not simply a promotional statement.  In fact, the slogans or promotional statements appear to be “LIVE IN THE MOMENT” and “Uniquely Refreshing”, which per a cursory check on the EUIPO database, are not applied for.

 

If TAKE FIVE is not considered as a slogan, would the decision be different?  Well, the answer seems to be a YES….     

 

Studio Beverage Group, Inc. has an EUTM for “TAKE FIVE HARD SELTZER” (no. 018335911) in class 33 for “hard seitzer” successfully registered on 14 April 2021, just a little less than 2 months prior to the filing of the application for “TAKE FIVE”. 

 

As “HARD SEITZER” is descriptive of the applied-for goods, the distinctive element would likely be “TAKE FIVE”.  Applying the reasoning adopted by the examiner and the Board in “TAKE FIVE”, shouldn’t “TAKE FIVE HARD SELTZER” be refused as well?  It could equally be said that the public will see the mark as a general laudatory advertising statement and an appeal to potential customers to take or buy five seltzers.  Arguably, while descriptive, the addition of the words “HARD SELTZER” does make it clearer that “TAKE FIVE” is a brand and not a promotional slogan.  In any event, it is rather interesting to see that Studio Beverage Group, Inc. did not submit arguments along these lines during the prosecution stage and the appeal, but instead made submissions (among others) arguing that the sign is unusual, original and a play of words, which as the Board puts it - “somehow unusual”.