According to the EU General Court the slogan “It’s Like Milk, But Made for Humans” has a distinctive character and can be registered as a trademark
With the judgment of 20 January 2021 in case T-253/20, the EU General Court stated that the slogan “It’s Like Milk, But Made for Humans” has the minimum degree of distinctive character required by Article 7 (1) (b) of the EU Regulation no. 2017/1001 and therefore it can be registered as a trademark.
The trademark application of the slogan at issue was filed by the Swedish company Oatly AB, that produces alternatives to dairy products made from oats. The EUIPO refused to register the trademark in respect of certain groups of products included in class 29 (milk substitutes), class 30 (oat-based products) and class 32 (oat-based beverages) of the Nice classification: according to the EUIPO, in fact, the trademark was devoid of any distinctive character in respect of these products.
Oatly AB challenged the EUIPO examiner’s decision before the Board of Appeal of the EUIPO. However, even the Board of Appeal found that the trademark applied for was devoid of any distinctive character. In fact, according to the Board of Appeal, it would have been perceived by the consumers as a laudatory promotional slogan rather than as an indication of the commercial origin of the goods in respect of which the registration was sought. It would only have been suitable for indicating the positive aspects of the goods at issue, namely the fact that they were similar to dairy products but unlike those products they were specifically made and apt for human consumption. This fact, in addition to the trademark’s length, prevented it from being perceived as a trademark by the consumer. Based on this reasoning, the Board of Appeal deduced that, beyond its promotional meaning, the slogan “it’s like milk but made for humans” was incapable of performing the function of a trademark regarding the goods at issue due to the lack of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
Oatly AB appealed against the decision of the Board of Appeal before the EU General Court, alleging the infringement of Article 7 (1) (b) of Regulation no. 2017/1001 submitting that the Board of Appeal erred in the assessment of the distinctive character of the trademark applied for.
Preliminarily, the EU General Court pointed out that, according to settled case-law, the trademarks devoid of any distinctive character referred to in Article 7 (1) (b) of Regulation 2017/1001 “are those which are regarded as incapable of performing the essential function of a trademark, namely that of identifying the commercial origin of the goods or services at issue”. Moreover, the EU General Court specified that it is widely understood that “a minimum degree of distinctive character is sufficient to preclude the application of the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001” [1].
Having said that, the EU General Court stated that the registration of trademarks consisting of advertising slogans, indications of quality or incitements to purchase the goods or services covered by the mark is not excluded by such use. In addition, in assessing the distinctive character of those trademarks, it is inappropriate to apply criteria which are stricter than those applicable to other types of trademark. In conclusion, the laudatory connotation of a word trademark does not preclude that it might guarantee to consumers the origin of the goods or services which it covers: “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”. Therefore, a trademark consisting of an advertising slogan might have a distinctive character if – along with its promotional function – it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services.
In light of that principle, the EU General Court assessed whether the mark “It’s Like Milk, But Made for Humans” has a distinctive character, stating in this respect that the conjunction “but” in the middle of the sentence gives the idea of an opposition between the first part of the trademark (“it’s like milk”) and the second part of the trademark (“made for humans”). Therefore, this mark conveys “not only the idea that the goods at issue, which are foodstuffs, are akin to milk and are intended for human consumption, but also the idea that milk itself is not”; the trademark at issue contests the commonly accepted idea that milk is a key element of the human diet. According to the EU General Court this trademark conveys to the relevant public a message that is easy to remember, which is capable of distinguishing the applicant’s goods from goods that have another commercial origin.
Based on the above, The EU General Court found that the EUIPO Board of Appeal erred in finding that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, upheld the appeal of the Oatly AB and annulled the previous decision by confirming that the slogan “It’s Like Milk, But Made for Humans” could be registered as a trademark.
[1] On this subject see also the decision of last 24 March 2021 of the EU General Court (Case T-93/20) concerning the word mark “WINDSOR – CASTE”, commented here on our blog.