We have previously written about slogans and their distinctiveness on our blog. We said that very often slogans suffer from being too descriptive for registration purposes and provided tips to increase your slogan’s distinctiveness and registrability.
Earlier this year the EU court considered the distinctiveness of the slogan IT’S LIKE MILK BUT MADE FOR HUMANS.
The owner of the trademark, Oatly AB, is a Swedish company making plant-based dairy substitutes. Oatly launched the slogan in Sweden in 2014. In 2015 it was sued by the Swedish milk lobby organisation for spreading misinformation about milk. Oatly was fined and ordered to stop using the slogan, but they also generated a lot of publicity for their campaign and products. Their campaign also caused controversy in other countries where it ran.
In 2019 Oatly applied for an EU trademark for IT’S LIKE MILK, BUT MADE FOR HUMANS slogan.
The EUIPO rejected the slogan stating that no company “should be given a monopoly right to use banal, commonplace or everyday terms to promote its commercial activities.”
The EUIPO considered the slogan to be merely laudatory and promotional, communicating a clear value proposition to consumers. This descriptive meaning was, according to the EUIPO, clear and understandable without any mental effort since most people are aware of the general debate surrounding milk and it’s suitability and desirability for human consumption.
After Oatly’s appeal, the top EU court confirmed earlier this year that the trademark is distinctive and registrable. The EU court held that the fact that the mark has some promotional attributes does not mean that it cannot also be a distinctive trademark. This is the case even if the mark is primarily understood as a promotional slogan. The trademark is distinctive if, apart from its promotional function, it can immediately be perceived as an indication of commercial origin.
Why did the EU court consider the slogan to be distinctive?
The reason behind the decision was that the information in the slogan called into question a commonly held view that milk is intended for human consumption. This is a view that is held by the general public, and even those who do not share this view are very well aware of it. The slogan, therefore, sets off a cognitive process in the minds of the relevant public making the slogan easy to remember and capable of distinguishing Oatly’s products.
As evidence of this conceptual twist, Oatly provided evidence of the controversy that had followed the campaign in several countries. The controversy surrounding the campaigns showed that the information in Oatly’s slogan was “radical” enough to cause uproar. It challenged the majority view in an unexpected and thought-provoking way, making the trademark memorable and recognizable. If a slogan makes you think “wait… what?” it might be sufficiently distinctive for registration.
Slogans that challenge the majority view in an unexpected way can be distinctive as trademarks even if they are even primarily promotional in nature or contain information that could be viewed as correct and directly descriptive of the products.
Finding the right balance is very difficult. Even though Oatly won in the end, they lost in the EUIPO twice. The process took nearly two years and cost a lot of money. Especially smaller companies should be aware that choosing slogans with descriptive content usually means that they cannot be protected as trademarks, or at least getting protection will be costly, uncertain, and require a long process.