With decision No. T-253/20, issued on 20 January 2021, the EU General Court annulled the decision of the EUIPO Board of Appeal issued under Article 7(1)(b) EUTMR regarding the refusal of the registration of the word sign “IT’S LIKE MILK BUT MADE FOR HUMANS”.
The decision provides significant clarification on the requirements to register trademarks consisting of slogans.
Background of the proceedings
On 14 March 2019, the applicant, Oatly AB, filed an application before the EUIPO to register the word sign “IT’S LIKE MILK BUT MADE FOR HUMANS” in Classes 18, 25, 29, 30 and 32.
On 5 September 2019 the examiner, on the basis of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, refused to register the mark applied for goods related to, inter alia, dairy products, milk and beverages, i.e. all the goods claimed by the application in class 29, and the majority of goods claimed in classes 30 and 32.
The refusal was confirmed by the Board of Appeal on 7 February 2020. The Board assessed that part of the mark applied for (“it’s like milk”) indicated that the goods marketed were or contained milk substitutes and, secondly, that the second part of that mark (“but made for humans”) made clear that they were more apt for human consumption. Therefore, the sign would be understood as a laudatory promotional slogan, rather than an indication of the commercial origin of the claimed goods. In particular, the Board stated that sign “IT’S LIKE MILK BUT MADE FOR HUMANS” indicated to consumers who suffered from lactose intolerance or an allergy to milk, or were vegans that the goods covered by the sign are very similar to milk and that they are, in contrast to cow’s, goat’s and sheep’s milk, specifically made for human consumption.
The applicant filed an appeal before the EU General Court. The Court annulled the previous decisions issued by the EUIPO, and upheld the appeal on the basis of the following arguments.
The decision of the EU General Court
First, the Court provided a review of the case law of the Court of Justice on trademarks consisting of slogans and advertising messages. In particular, the Court referred to the following principles:
- the registration of marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks is not excluded by virtue of such use (C‑64/02 P, OHIMv Erpo Möbelwerk, par. 41, and C‑398/08 P, Audi v OHIM 35);
- when assessing a mark’s distinctive character, applying stricter criteria to slogans than to other types of signs is not appropriate (C‑398/08 P, Audiv OHIM 35 and the case-law cited, and C‑311/11 P, Smart Technologies v OHIM, par. 25 and the case-law cited);
- while the criteria for the assessment of distinctive character are the same for different categories of marks, the relevant public’s perception is not necessarily the same in relation to each of those categories and that it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories, as compared with marks of other categories (C‑398/08 P, Audiv OHIM 37 and the case-law cited, and T‑104/16, Puma v EUIPO (FOREVER FASTER), par. 18 and the case-law cited);
- in any case, advertising slogans cannot be required to display “imaginativeness” or even “conceptual tension which would create surprise and so make a striking impression” in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation 2017/1001 (C‑398/08 P, Audiv OHIM 39 and the case-law cited, and T‑550/14, Volkswagen v OHIM (COMPETITION), par. 16).
In light of the above case law, the Court pointed out that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. Consequently, a trademark consisting of an advertising slogan must be regarded as being devoid of any distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula.
As regards to the specific meaning of the mark applied for “IT’S LIKE MILK BUT MADE FOR HUMANS”, the Court stated that, given the presence of conjunction “but” in the middle of that mark, the consumer will perceive an opposition between the first part of the mark (“it’s like milk”) and the second part of the mark (“made for humans”). As a result, the mark applied for conveys not only the idea that the goods at issue, which are foodstuffs, are similar to milk and are intended for human consumption, but also the idea that milk itself is not.
By using the above meanings, the Court ascertained that the mark applied for calls into question the commonly accepted idea that milk is a key element of the human diet. The mark applied for conveys a message which is capable of setting off a cognitive process in the minds of the relevant public, including those consumers who avoid consuming dairy products for ethical or physiological reasons.
Therefore, the wording “IT’S LIKE MILK BUT MADE FOR HUMANS” is easy to remember and is consequently capable of distinguishing the applicant’s goods from goods which have another commercial origin.
Hence, the Court concluded that the mark applied for “IT’S LIKE MILK BUT MADE FOR HUMANS” has the minimum degree of distinctive character required by Article 7(1)(b) of Regulation 2017/1001.