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News article | 11 May 2021 | Executive Agency for Small and Medium-sized Enterprises

Protecting a slogan as a trademark, and Kanye vs Walmart

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Good morning everyone. Hope you are all doing well and enjoying warmer weather. For this week’s IP news:

 

A slogan can be protected as a trademark

The EU General Court reaffirmed in its decision involving Oatly that a slogan can be protected as a trademark. 

Oatly is a Swedish producer of oat-based dairy substitutes. In 2019, Oatly filed its initial application with the EU Intellectual Property Office (EUIPO) to register its slogan “It’s like milk but made for humans” as a trademark (a slogan that was already used in a commercial in Sweden but was banned due to a lawsuit from Sweden’s dairy lobbies). 

Oatly attempted to register the slogan in respect of several goods, including dairy substitute foods and beverages. However, the application was refused in respect of dairy substitutes due to an alleged lack of distinctive character under article 7(1)(b) of Regulation (EU) 2017/1001 (EU trademark Regulation)

Oatly appealed this initial decision unsuccessfully. According to the EUIPO's Board of Appeal, Oatly’s sign is more of a promotional slogan than one that acts as an indication of the commercial origin of the goods (hence, the lack of distinctiveness). The board also considered that the length of the sign would exclude consumers from recognising the slogan as a trademark. 

Against this Oatly appealed. 

On appeal, the EU General Court provided clarification on the legal requirements for the protection of “slogan marks”. First, the registration of advertising slogans or laudatory sentences is not strictly excluded. When assessing the distinctiveness of a slogan, the bar cannot be raised higher and the same criteria will apply as with regular trademarks. 

According to the General Court, the sole fact that a wordmark conveys a laudatory message does not mean that it cannot be appropriate to indicate the origin of the goods and services to which it relates. Nor can there be any requirement that an advertising slogan should portray “imaginativeness” or “conceptual tension”.

Second, the distinctive character of a mark must be assessed according to the perception of the public (here the General Court broadened the geographical scope of which consumers should be taken into account in this assessment). 

The average consumer is aware of the debates on the health of milk and on the views that it should be reserved to young animals, meaning they will only perceive it as a promotional message.

Oatly stated that the slogan did not appeal mainly to vegan and lactose-intolerant consumers, but to the average consumer without “extreme” or “minority” views. The General Court agreed to the goods at issue being everyday consumer goods, taking into account only the general public’s perception of the mark for the assessment of distinctiveness.

To the average consumer, Oatly’s message would convey not only that the goods are alternatives to milk that are suitable for human consumption, but also that milk is not suitable for human consumption. The contradiction to this commonly accepted idea triggers a cognitive process, which would make the mark more memorable.

Therefore, the mark applied for has at least a minimum degree of distinctive character and the contested decision of the Board of Appeal was annulled.

Hence, according to the General Court, Oatly’s slogan can certainly function as a trademark and serve as an indication of origin for consumers.

 

Kanye vs Wallmart

Walmart has filed a formal opposition to Kanye West's trademark application before the EUIPO for his "Yeezy" logo because this logo looks too much like its own stamp. Hence, consumers could mistake the Walmart “Spark Design" with the "Yeezy" symbol that's in the same general shape but is expressed in dots rather than solid marks, and be led to believe that both companies are somehow associated or endorsing one another.

Walmart is open to negotiation with West’s company, depending on how the artist plans to use his proposed logo. This means that Walmart is open to reach a coexistence agreement if needed with the rapper.

We will definitely keep you updated! 

 

This is all for today. Enjoy the rest of the week!

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Executive Agency for Small and Medium-sized Enterprises