Slogan automatically protected as a trade mark? A recent take of the Italian Supreme Court

The registrability of slogans as trade marks was examined not too long ago by the First Board of Appeal the EUIPO. By its decision in Case R 664/2022-1 the Board of Appeal refused the application for the registration of the slogan “TAKE FIVE” (reported by the IPKat here).

More recently, the Italian Supreme Court issued a decision on the application for the registration as trade mark of the slogan “LA TUA PELLE MERITA DI ESSERE TRATTATA BENE” (which can be translated as “YOUR SKIN DESERVES TO BE TREATED WELL”).

(LastOne, an Italian kat by Arianna Antonelli) 

The case

On 23 December 2022, the Italian Supreme Court issued decision no. 37697 and dismissed the appeal against the refusal by the Italian Patent and Trademark Office (UIBM) to register the phrase “YOUR SKIN DESERVES TO BE TREATED WELL” as a trade mark for goods and services in classes 3 (cosmetics and cleaning preparations), 5 (sanitary preparations for personal hygiene, other than toiletries, dietary supplements, intended to supplement a normal diet or to have health benefits), 35 (wholesale, on-line sale of cosmetic, pharmaceutical, alimentary and dietary products) and 45 (service and consultancy on wealth, on pharmaceutical and cosmetic products, hygiene and beauty services).

The UIBM examiner was of the opinion that the sign would be contrary to art. 7 of the Italian Industrial Property Code - Law Decree no. 30/2005 (as implemented pursuant to art. 3 Directive (EU) 2015/2436 and which is specular to art. 7 (1)(b) EUTMR), that is it would lack the required distinctive character.

The refusal decision was then upheld by the Commissione dei Ricorsi (Board of Appeal). The Board of Appeal considered that the commercial phrase could be considered as a slogan essentially attributable to beauty products. A slogan can be registered as trade mark, when it has distinctive character and is not simply composed of expressions commonly used in the language of the relevant sector or merely informs with common terms about the nature or advantages or the qualities of the product or service.

From this perspective, the expression “YOUR SKIN DESERVES TO BE TREATED WELL”, addressed to the world of cosmetic products in its broad latitude, was considered (i) evocative of the physical improvement and well-being as well as being (ii) extremely generic and descriptive of the products/services.

The case was then brought before the Italian Supreme Court. The appellant/trade mark applicant claimed that the whole expression could not be considered merely lacking distinctive character because it did not simply recall the function allegedly performed by the product or service, nor that such distinctive capacity would be absent merely because the mentioned expression is composed of signs or indications in common use. The appellant argued that a trade mark, in order to assume distinctive character, does not need be particularly creative, nor have a fanciful character or a conceptual tension/surprise effect. A slogan is to be deemed to have distinctive character whenever it is suitable to convey a message that goes beyond the mere qualities of the goods or services that it distinguishes as in the specific case the sign implied a message that spurred people to keep care of themself, appealing to an essentially emotional component of the message itself.

The ruling of the Supreme Court

While the first part of the decision deals with some procedural issue on the jurisdictional role and competence of the Board of Appeal, the second part concerns the registration of slogans as trade marks.

The Supreme Court held that the appellant did not ground the assertion that the message communicated by the whole slogan should have been capable to distinguish the company and its products or services from other companies. By recalling some decisions of the Court of Justice of the European Union on the requirement of distinctive character and its evaluation (C-473/01 and C474/01, C-64/02, C-398/08, C-139/16), the Italian Supreme Court stated that it cannot be excluded per se the possible registration of a word trade mark for its laudatory or commercial use, when the sign can be perceived by the relevant public simultaneously as a promotional formula and an indication of the commercial origin. On the contrary, the simple qualification of a promotional message as slogan does not automatically imply the required distinctive character for trade mark registration, thus independently of any emotional statement perceived by the public.