With the decision No. T-156/19, issued on 13 May 2020, the EU General Court confirmed the refusal of the registration of the wordmark “we’re on it” under Article 7(1)(b) EUTMR. The decision provides significant clarification on trademarks consisting of slogans, advertising messages, idiomatic expressions, and indications of quality or incitements to purchase the goods or services which they designate.
Background of the proceedings
On 14 July 2017, the plaintiff, Koenig & Bauer AG, filed a trademark application for the wordmark “we’re on it” for a large number of classes (1, 2, 3, 4, 7, 9, 11, 16, 35, 36, 37, 38, 39, 40, 41, 42), with particular reference to printing machines and related services (such as installation, maintenance and repair of printing machines).
On 20 April 2018, the EUIPO examiner refused the application, considering the mark as devoid of any distinctive character pursuant to Article 7(1)(b) EUTMR. The refusal was confirmed by the Board of Appeal on 19 January 2019. The Board assessed that the sign consisted in a generally used expression, neither rare nor complicated. According to the Board the expression “we’re on it” does not possess a certain originality or resonance and it does not trigger in the minds of the relevant public a cognitive process or requires an interpretative effort.
The applicant filed an appeal before the EU General Court. The Court confirmed the previous decisions, and dismissed the appeal on the basis of the following arguments.
The decision of the EU General Court
The Court referred to case law of the Court of Justice on trademarks consisting of slogans and advertising messages. Indeed, previous rulings of the Court of Justice stated that (i) the registration of a mark 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 that mark is not excluded as such by virtue of such use (27/05/2018, FEEL FREE, T‑362/17, EU:T:2018:390, p. 28 and case law cited); (ii) when assessing a mark’s distinctive character, applying stricter criteria to slogans than to other types of signs is not appropriate (12/07/12, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460 and case law cited); (ii) the lack of distinctiveness cannot be justified by the lack of the element of imagination, of an additional element of originality, or of any conceptual tension which would create surprise thus delivering a striking impression (24/04/2018, WE KNOW ABRASIVES, T‑297/17, EU:T:2018:217, p. 33 and case law cited).
Hence, the Court affirmed that a mark consisting of a commercial slogan is deemed to convey a message about the goods and services for which protection is sought. In the case at issue the sentence “we’re on it” will be understood by the relevant public as “we will take care of it” which is a message that may be used by any supplier on the market in order to incite consumers to purchase goods or services.
The Court held that the idiomatic expression “we’re on it” is too simple and is generated in general terms. Moreover, it has a clear and precise semantic content, whose interpretation does not require considerable mental effort on the part of the relevant consumer. The fact that, as claimed by the plaintiff, the expression at issue could be interpreted in a number of ways, or that it could have several meanings, does not alter its non-distinctive nature. Therefore, the expression “we’re on it” will not be perceived by the public as an indication of the commercial origin of the goods or services claimed, but rather only as a promotional message.
Therefore, the Court concluded that the commercial slogan “we’re on it” lacks distinctive character (pursuant to Article 7(1)(b) EUTMR) and it is not capable of identifying the commercial origin of those goods and services.