The challenge to protect slogan trademarks in the EU 

While slogans are a widely used advertising and branding tool, they are not easy to protect as trademarks in the EU due to their often-laudatory nature, as Perrine Waendendries explains. 

According to established EU case law, the protection of slogan trademarks, while challenging, is not excluded as such. However, a recent decision by the EU General Court confirms the reluctance of the EU IP authorities to grant trademark protection to slogans with a laudatory nature. 

In T-97/23 - Medela v EUIPO (THE SCIENCE OF CARE), the EU General Court considered that the capacity of a slogan to constitute a trademark must be assessed in the same way as any other sign, without there being any need to add stricter criteria to assess distinctive character. Nonetheless, the fact remains that assessing the distinctive character of a slogan is not easy and, in practice, case law rarely grants such protection. 

The distinctiveness of slogans as trademarks is questionable when the relevant public perceives them solely as a simple promotional tool. On the other hand, they may be recognised as having sufficient distinctive character if, beyond their promotional function, they are perceived by the relevant public as an indication of the commercial origin of the products and services concerned (thereby satisfying the essential function of a trademark). 

Slogan trademarks: Criteria for distinctiveness  

Although they are not always easy to apply in practice, the Court provided the following criteria to assess the distinctive character of a slogan. It held a slogan is likely to have a distinctive character so long as it: 

• has several meanings, and/or 
• constitutes a play on words, and/or 
• is imaginative, surprising or unexpected, and/or 
• has particular originality or significance, and/or 
• triggers a cognitive process or an effort of interpretation in the relevant public. 

In this case, the German company Medela Holding AG filed an international trademark for ‘The Science of Care’ in August 2021, targeting the EU, in particular, for products and services in classes 3, 5, 8, 9, 10, 11, 18, 20, 21, 25, 28, 41 and 44. 

The EUIPO examiner, then the Board of Appeal, partially refused trademark protection for the services of “rental of breast pumps and vacuum pumps; advisory and information service on medical products; advisory services in the field of medical devices and instruments” in class 44, on the basis that Article 7(1)(b) of the EU Trademark Regulation (EUTMR) stipulates that “marks which are devoid of distinctive character shall be refused registration". 

On appeal, the EU General Court confirmed the refusal to register the trademark due to a lack of distinctive character in connection with the aforementioned services in class 44 (the other products and services being not affected). 

To justify its decision, the Court stated that the expression “the science of care” may be considered by the relevant public as the body of knowledge relating to the wellbeing and health of a person. Therefore, and to the extent that said expression does not “present, with regard to the syntactic, grammatical, phonetic or semantic rules of the English language, an unusual character, this expression conveys a simple, clear and unequivocal message, which does not is not likely to give it any particular originality or significance, to require a minimum of interpretive effort or to trigger a cognitive process, and which, consequently, is not likely to indicate to the relevant public the commercial origin of the services for which the applicant contests the contested decision.” 

As could be expected, therefore, the Court confirmed the assessment of the Board of Appeal according to which "the mark applied for is a slogan providing purely laudatory information and not triggering any cognitive process necessary for its understanding, so that the said mark does not 'is not distinctive within Article 7(1)(b) of Regulation 2017/1001”. 

If, according to the criteria detailed above, very few slogans can be registered as trademarks in the EU, other legal systems could protect a slogan, including those of copyright, unfair competition and parasitism. 

Slogan trademarks: Key principles to remember 

Finally, let us note that this judgement also offers the opportunity to recall the following key principles: 

• When the Board of Appeal refuses the registration of a trademark, it is required to provide reasons for this refusal for each of the products and services, although an overall motivation for a group of products and/or services “which have a sufficiently direct and concrete link” is possible. 
• In its ruling, a limitation of the wording of the trademark application in question at the appeal stage – not consisting of a simple withdrawal but of a modification of the description of the products and/or services – cannot be considered. 
• New documents produced for the first time before the Court will not be counted as evidence since the Court only monitors the legality of the decisions of the EUIPO Boards of Appeal. 

For more information on protecting slogan trademarks, read our articles ‘Protecting slogans as trademarks: How and why?’ and ‘Oatly's slogan succeeds where other plant trademark applications have failed’. 

Perrine Waendendries is a Trademark and Design Attorney at Novagraaf in France.  

This article was first published in BLIP in January 2024.