EU trade mark disputes: Trucks you can trust - EU General Court rules over NOT MILK trade mark

EU trade mark dispute: Trucks you can trust

On 24 April, in case T-548/23, the General Court of the European Union had to decide whether the sign "TRUCKS YOU CAN TRUST" could be registered as an EU trade mark or whether it was merely an advertising slogan which could not be protected as a trade mark.

In July 2022, Daimler Truck AG, a large commercial vehicle manufacturer based in Germany, applied to the European Union Intellectual Property Office (EUIPO) to register the sign "TRUCKS YOU CAN TRUST" as an EU word trade mark (N. 018712899), which mainly covered motor vehicles and their parts, toys and vehicle rental and repair services, falling within Classes 12, 28, 36 and 37 of the Nice Classification.

However, both the examiner and the EUIPO Board of Appeal considered that the mark applied for was not distinctive within the meaning of Article 7(1)(b) of Regulation 2017/1001, as it would be perceived as an advertising slogan without any indication of the commercial origin of the goods and services.

Daimler Truck AG appealed against the EUIPO decision to the General Court of the European Union, which had to decide whether the mark applied for, "TRUCKS YOU CAN TRUST", had sufficient distinctive character to be registered or whether it was merely an advertising slogan which lacked such character.

The General Court upheld the decision of the EUIPO to refuse registration of the mark. The Court found that the mark would be perceived primarily as a generic and descriptive advertising slogan and thus lacked the necessary distinctive character to function as an indicator of commercial origin. Furthermore, it pointed out that the expression 'trucks you can trust' conveys a simple and clear message, without triggering any additional cognitive process in the mind of the relevant public which makes it less distinctive in the context of commercial competition. For this reason, the General Court held that the sign "TRUCKS YOU CAN TRUST" did not meet the distinctiveness criteria set out in EU Regulation 2017/1001 and, therefore, could not be registered as a trade mark.

For more on the topic of trade mark protection of slogans, we invite you to read our blog post on the topic here. 

EU General Court rules over NOT MILK trade mark

On 8 May, in case T-320-23, the General Court of the European Union issued its decision on  whether the trade mark 'NOT MILK' met the requirements of distinctiveness and non-descriptiveness laid down in the EU Trade Mark Regulation for its registration as a trade mark in the European Union.

The Not Company SpA, a Chilean food technology company that produces plant-based alternatives to animal-based foods, filed an application with the European Union Intellectual Property Office (EUIPO) for registration of the figurative mark 'NOT MILK' (consisting of the two words written vertically in blue and black letters) as an EU trade mark (N. 018508169) covering, in particular, milk substitutes and beverages made from a mixture of fruit and vegetable juices falling within Classes 29 and 32 of the Nice Classification.

At first instance, the EUIPO examiner refused the registration on the grounds that the mark lacked distinctive character as required under Article 7(1) of the Regulation, and that The Not Company had failed to demonstrate that the mark acquired distinctive character through use under Article 7(3) of the EUTM. The Chilean company appealed the examiner's decision. However, the EUIPO Board of Appeal dismissed the appeal holding that the mark was indeed descriptive of the goods in question and lacked distinctive character.

The Not Company SpA appealed to the General Court of the European Union, which had to decide whether the trade mark 'NOT MILK', had the necessary distinctive character to be registered and whether it was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001.

First, regarding distinctiveness, although the appellant argued that the expression required a cognitive effort to understand because of its grammatical structure and its fanciful nature, the General Court remarked that the mark was composed of the word elements 'not' and 'milk', which were clearly identifiable and arranged vertically in the figurative representation. It therefore concluded that the relevant public would clearly perceive that the products were not milk or did not contain milk products. Since the expression 'not milk' is clearly interpreted as referring to the absence of milk or milk products in the products, it was considered descriptive and not suitable for registration. 

The General Court therefore upheld the decision of the EUIPO to refuse registration of the mark NOT MILK on the basis of its lack of distinctiveness and its descriptive nature.