The Eu Court on the distinctiveness of the trademark-slogan

On 11 and 13 March 2020, Sushi&Food Factor sp. z oo sp.k. filed two trademark applications at the European Union Intellectual Property Office (EUIPO) relating to the following figurative signs, for classes 29, 30 and 43 (basically food, beverages and a variety of food services, food supply, rental):

 The trademark applications were rejected for lack of distinctiveness. The decisions were then upheld by the EUIPO Board of Appeal.

The Commission, in particular, also considered that the expression 'READY 4YOU' served a promotional function for the goods and services applied for, and therefore conveyed a purely advertising message, incapable of providing the relevant public with indications as to the origin of the goods and services protected by the registration.

Against that decision, the applicant brought an action before the General Court of the European Union seeking an annulment of the EUIPO Board of Appeal’s decision. That appeal was also dismissed by the decision at hand, for the following reasons.

The EU General Court, in its decision of 14 September 2022, first of all recalled that, pursuant to Article 7(1)(b) of Regulation 207/2009, trademarks without distinctive character cannot be registered. The distinctive character of a trademark presupposes that it allows the origin of the goods and/or services in question to be identified, enabling the public to recognise and distinguish them on the market from those associated with other suppliers. On this point, according to the EU General Court, the Commission had correctly assessed the marks in question, taking into account both the goods and services for which registration was sought and the perception of the relevant public. In fact, the colour and figurative elements were not such as to enable the public to identify them on the market, and were therefore incapable of conferring distinctive character on the marks in question.

Secondly, the EU General Court clarified that in relation to marks consisting of signs that are used as trade slogans, expressions of quality or as means to persuade the public to purchase the goods and/or services, the registration is not precluded by reason of such use as long as those marks are suitable for assuring consumers of the origin of the goods or services they designate. In this regard, confirming what the Commission had already held, the EU General Court stated that the trademarks applied for are not suitable for sending a message to customers about the commercial origin of the product, but merely perform a promotional function. In fact, the EU General Court pointed out that, thanks to the presence of the symbol '4' in the central point of the slogan, the average English-speaking consumer is put in the position of believing that the foodstuffs are to be considered ready-made and the services offered are specially prepared for him. 

Finally, the EU General Court recalled that no one should rely on the registration of other trademarks with similar words or figurative elements in favour of their trademark application. In the present case, the fact that similar trademarks containing the words '4you' and 'ready' have been registered by the applicant himself, or by other parties, is not decisive for the purposes of granting the application for registration of the trademark in question, since the EUIPO is required to assess distinctiveness on the basis of its specificity.  

For the reasons stated above, the EU General Court dismissed the application and ordered the applicant to pay the costs.