On 15 February 2023, the General Court of the European Union issued its judgment in case T-204/22 (Rimini Street, Inc. v EUIPO) involving American company Rimini Street, Inc. and the EUIPO. The case deals with the topic of whether the registration of slogans is allowed by EU trade mark law, this being a topic that The IPKat has also devoted substantial attention to (see here).
Background
Rimini Street Inc, ("Rimini Street") is a Las Vegas-based provider of unified software support and services (see here). The company is known as an independent provider of enterprise software support services for Oracle and SAP licensees. For some copyright aficionados, the company was also the protagonist in a copyright infringement lawsuit brought by Oracle in the US, "Rimini Street Inc. v. Oracle USA Inc, 586 U.S. ___ (2019)" (see here).
Rimini Street sought to have its International Registration (IR) No. 1 559 651 for the slogan "OTHER COMPANIES DO SOFTWARE WE DO SUPPORT" designate the EU territory for consultancy and technical support services and maintenance of computer software in class 42.
The EUIPO refused the EU designation of Rimini Street's IR due to lack of distinctiveness on the basis of Article 7(1)(b) EUTMR.
The company appealed.
The Board of Appeal dismissed the appeal and upheld the reasoning of the Examiner, finding that the word sign "OTHER COMPANIES DO SOFTWARE WE DO SUPPORT" would be merely a promotional formula containing nothing beyond its obvious promotional meaning that would enable the relevant public to easily and immediately remember it as a distinctive mark for the services in question.
The company brought an action for annulment before the General Court against the Board's decision, which was also dismissed.
The judgment of the Court
The applicant put forward a single plea in law, alleging infringement of the Board of Appeal's assessment of the distinctive character of the sign "OTHER COMPANIES DO SOFTWARE WE DO SUPPORT".
The Court clarified the requirements for assessing the distinctive character of EU trade mark applications, namely that a trade mark has distinctive character only if it serves to identify the goods or services for which registration is sought as originating from a particular undertaking and thus to distinguish those goods from those of other undertakings.
This means that distinctiveness must be assessed, on the one hand, in relation to the goods or services for which registration is sought and, on the other hand, in relation to the perception of the mark by the relevant public.
Registration of marks consisting of advertising slogans is thus not precluded per se on the basis of such use. However, a trade mark ONLY consisting of an advertising slogan must be regarded as devoid of any distinctive character if it can be perceived by the relevant public only as a mere promotional formula. In other words, if a slogan, apart from its advertising function, cannot be perceived directly by the relevant public as an indication of the commercial origin of the goods and services concerned, it shall not be registered.
Rimini Street did not dispute the relevant public and its level of attention as assessed by the Board, namely the English-speaking public and professionals in the European Union with a higher-than-average level of attention. However, the company argued that its word sign can have several meanings and that all those meanings also require the addition of words.
Moreover, the company argued that the contested IR would leave a number of questions unanswered, including the manner of support and the undertakings to which the expression “other companies” refers. As a result, it would convey a vague meaning and, consequently, a message capable of triggering a cognitive process in the relevant public which renders the contested international registration memorable and, therefore, distinctive. Finally, the grammatical structure of that slogan and the repetition of the verb "do" would contribute to conferring distinctive character to the contested international registration.
The Court rejected these arguments, pointing out – first of all – that the relevant public will not pay much attention to a sign whose semantic content is merely an advertising message of a rather general nature and will not take the time to explore the various possible functions of the group of words or to memorise it as a trade mark.
Secondly, the relevant public will perceive the contested IR as a whole and will not concern itself with its various details.
Thirdly, the combination of common English words in a single sign (e.g., "DO" or "OTHER COMPANIES"), conveys a clear and unambiguous message which is immediately perceptible and which, contrary to Rimini Street's argument, does not require any effort of interpretation on the part of the average consumer. The meanings proposed by the applicant which deviate from that perception are neither immediately plausible nor immediately perceptible to the average consumer.
Since the sign is a word mark that does not even contain a figurative element capable of attracting the attention of the relevant consumers, Rimini Street cannot claim any particular design or arrangement of the elements of which it is composed. The sign at issue, therefore, lacks originality or resonance requiring at least some interpretation by the relevant public or triggering a cognitive process in the minds of that public, and is not capable of alerting consumers to the commercial origin of the services in question.
Consequently, the plea was rejected, and the action was dismissed in its entirety.
Comment
The case joins the long list of case law on the unregistrability of slogans that would be perceived as mere promotional formulas due to the low level of attention of the relevant public in relation to advertising claims. This is yet another reminder for companies to consider registering slogans in the EU that at least constitute a play on words and/or contain elements of conceptual intrigue or surprise such that they can be perceived as imaginative or unexpected, and/or have particular originality or resonance and/or trigger a cognitive process or require an interpretive effort in the minds of the relevant public.
 |
| by Tjarko Busink is licensed under CC BY-NC 2.0. |
Rimini Street Inc, ("Rimini Street") is a Las Vegas-based provider of unified software support and services (see here). The company is known as an independent provider of enterprise software support services for Oracle and SAP licensees. For some copyright aficionados, the company was also the protagonist in a copyright infringement lawsuit brought by Oracle in the US, "Rimini Street Inc. v. Oracle USA Inc, 586 U.S. ___ (2019)" (see here).
Rimini Street sought to have its International Registration (IR) No. 1 559 651 for the slogan "OTHER COMPANIES DO SOFTWARE WE DO SUPPORT" designate the EU territory for consultancy and technical support services and maintenance of computer software in class 42.
The EUIPO refused the EU designation of Rimini Street's IR due to lack of distinctiveness on the basis of Article 7(1)(b) EUTMR.
The company appealed.
The Board of Appeal dismissed the appeal and upheld the reasoning of the Examiner, finding that the word sign "OTHER COMPANIES DO SOFTWARE WE DO SUPPORT" would be merely a promotional formula containing nothing beyond its obvious promotional meaning that would enable the relevant public to easily and immediately remember it as a distinctive mark for the services in question.
The company brought an action for annulment before the General Court against the Board's decision, which was also dismissed.
The judgment of the Court
The applicant put forward a single plea in law, alleging infringement of the Board of Appeal's assessment of the distinctive character of the sign "OTHER COMPANIES DO SOFTWARE WE DO SUPPORT".
The Court clarified the requirements for assessing the distinctive character of EU trade mark applications, namely that a trade mark has distinctive character only if it serves to identify the goods or services for which registration is sought as originating from a particular undertaking and thus to distinguish those goods from those of other undertakings.
This means that distinctiveness must be assessed, on the one hand, in relation to the goods or services for which registration is sought and, on the other hand, in relation to the perception of the mark by the relevant public.
Registration of marks consisting of advertising slogans is thus not precluded per se on the basis of such use. However, a trade mark ONLY consisting of an advertising slogan must be regarded as devoid of any distinctive character if it can be perceived by the relevant public only as a mere promotional formula. In other words, if a slogan, apart from its advertising function, cannot be perceived directly by the relevant public as an indication of the commercial origin of the goods and services concerned, it shall not be registered.
Rimini Street did not dispute the relevant public and its level of attention as assessed by the Board, namely the English-speaking public and professionals in the European Union with a higher-than-average level of attention. However, the company argued that its word sign can have several meanings and that all those meanings also require the addition of words.
Moreover, the company argued that the contested IR would leave a number of questions unanswered, including the manner of support and the undertakings to which the expression “other companies” refers. As a result, it would convey a vague meaning and, consequently, a message capable of triggering a cognitive process in the relevant public which renders the contested international registration memorable and, therefore, distinctive. Finally, the grammatical structure of that slogan and the repetition of the verb "do" would contribute to conferring distinctive character to the contested international registration.
The Court rejected these arguments, pointing out – first of all – that the relevant public will not pay much attention to a sign whose semantic content is merely an advertising message of a rather general nature and will not take the time to explore the various possible functions of the group of words or to memorise it as a trade mark.
Secondly, the relevant public will perceive the contested IR as a whole and will not concern itself with its various details.
Thirdly, the combination of common English words in a single sign (e.g., "DO" or "OTHER COMPANIES"), conveys a clear and unambiguous message which is immediately perceptible and which, contrary to Rimini Street's argument, does not require any effort of interpretation on the part of the average consumer. The meanings proposed by the applicant which deviate from that perception are neither immediately plausible nor immediately perceptible to the average consumer.
Since the sign is a word mark that does not even contain a figurative element capable of attracting the attention of the relevant consumers, Rimini Street cannot claim any particular design or arrangement of the elements of which it is composed. The sign at issue, therefore, lacks originality or resonance requiring at least some interpretation by the relevant public or triggering a cognitive process in the minds of that public, and is not capable of alerting consumers to the commercial origin of the services in question.
Consequently, the plea was rejected, and the action was dismissed in its entirety.
Comment
The case joins the long list of case law on the unregistrability of slogans that would be perceived as mere promotional formulas due to the low level of attention of the relevant public in relation to advertising claims. This is yet another reminder for companies to consider registering slogans in the EU that at least constitute a play on words and/or contain elements of conceptual intrigue or surprise such that they can be perceived as imaginative or unexpected, and/or have particular originality or resonance and/or trigger a cognitive process or require an interpretive effort in the minds of the relevant public.
A slogan that consists only of a promotional formula? Not for an EU trade mark!
Reviewed by Giorgio Luceri
on
Tuesday, February 28, 2023
Rating:
Reviewed by Giorgio Luceri
on
Tuesday, February 28, 2023
Rating:
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