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While slogans are powerful marketing tools, their registration as a trade mark remains challenging in the EU

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The EUIPO Board of Appeal can reopen the examination of an application in the light of the absolute grounds without being limited by the Examiner’s reasoning, provided that the applicant has the right to be heard

MARK

In March 2022, the Administration of the State Border Guard Service of Ukraine (SBGS) filed a European Union trade mark (EUTM) application for the device mark shown on this page for various goods and services, including bags, clothing, toys and education services. The phrase has become a symbol of Ukrainian resistance, known worldwide and used on many products and campaigns as a symbol of support for Ukraine. With its EUTM application, SBGS hoped to prevent third parties from using it on their own products.

The EUIPO raised an objection to its registration on the basis of Article 7(1)(f) of the EU Trade Mark Regulation (EUTMR), considering that the sign was notably contrary to the principle of morality. SBGS appealed the decision, and the Board of Appeal (BoA) considered that the Application lacked distinctive character. The BoA therefore raised a new ground of refusal pursuant to Article 7(1)(b) EUTMR. The BoA did not further comment on the violation of public morality.

SBGS escalated the matter to the General Court (GC), seeking the annulment of the BoA decision, on three grounds:

• the Application was distinctive;
• the BoA failed to comply with the principles of equal treatment and sound administration by applying different criteria for assessing the distinctiveness of the Application than those used in the past to assess the distinctiveness of similar signs; and
• the BoA infringed Article 71(1) EUTMR by refusing to examine the Article 7(1)(f) ground for refusal of the contested decision.

The GC dismissed SBGS’s appeal. It rejected SBGS’s first argument, agreeing with the BoA that the phrase immediately became a political slogan, which does not indicate a commercial origin. As such, the Application would not be perceived by the consumers as promoting a trade or commercial entity, but merely as a political message promoting bravery. Therefore, the Application was devoid of distinctive character.

“The Application would not be perceived … as promoting a trade or commercial entity”

The GC also reiterated that the BoA was competent to reopen the examination of the Application in the light of the absolute grounds without being limited by the Examiner’s reasoning and without having to provide specific reasons in that regard. The GC endorsed the BoA’s finding that, as the Application was refused registration based on Article 7(1)(b), it was no longer necessary to examine whether the Application should also be refused registration based on Article 7(1)(f).

Slogans are indeed a popular marketing tool. They can effectively convey a message and are easily remembered by the public. It seems quite logical for companies to seek to register them as trade marks, to ensure a monopoly over them in the course of trade. However, at the EU level, it remains challenging to obtain a registration for these marks. While the assessment of slogans is not subject to stricter rules than other types of signs, it is only in exceptional cases – when a slogan could be considered to be doing more than merely promoting the qualities of goods or services – that EU jurisdictions may accept it as a valid trade mark indicating the origin.

Sarah Husslein is a Chartered Trade Mark Attorney and a Senior Associate at Bristows LLP
sarah.husslein@bristows.com

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