The CFI has rejected an application to register as a Community Trade Mark the slogan DREAM IT! DO IT!, finding that it lacks distinctive character. But what about Nike’s JUST DO IT? Emily Devlin reports.
Who: The EU Court of First Instance (CFI)
When: 2 July 2008
Law stated as at: 2 July 2008
The CFI has rejected an appeal brought by Ashoka, who applied to register as a Community Trade Mark the slogan DREAM IT, DO IT! ("Didi"). The EU trade mark judges said Didi lacked distinctive character contrary to Article 7(1)(b) of the Community Trade Mark Regulation (40/94/EEC – "CTMR").
In May 2004 Ashoka applied to register Didi in Classes 35, 36, 41 and 45 for a variety of services that encompassed the "exchange of socially progressive ideas regarding public entrepreneurship and pattern-changing ideas in a variety of fields including social, economic and environmental disciplines".
The application was refused in March 2006 and Ashoka appealed that refusal. In March 2007 the First Board of Appeal dismissed that appeal and confirmed the Examiner's decision in its ruling. The Board of Appeal reiterated the standard approach to slogan marks, particularly those that are phrased as an incitement to consumers, but which fail to perform the essential function of a trade mark. Slogan marks, by and large, are incapable of distinguishing the goods and services of one commercial source from another.
"Surely "Dream it Do It!"'s distinctive" say Ashoka
In its appeal to the CFI, Ashoka argued that Didi did possess a minimum degree of distinctive character and that it was wrong to assume that all slogan marks will prima facie contravene Article 7(1)(b) of the CTMR. Indeed, it pointed to the registration of a variety of slogan marks as CTMs, including:
- BEAUTY ISN'T ABOUT LOOKING YOUNG BUT LOOKING GOOD
- CREATING YOUR FUTURE
- WE GET IT DONE
- YOU HAVE TO WEAR IT TO BELIEVE IT
Further, Ashoka argued, Didi was not customary in the current language or the bona fide established practices of the trade in relation to the services applied for. Didi did not describe the services applied for, Ashoka said, nor did it convey a laudatory promotional message; it merely "provoked consumers' imaginations." Its "vagueness" and short phrasing made it easy to memorise and provided it with the minimum level of distinctive character required for registration.
"Dream it. Do it!" capable of indicating commercial origin of a product?
The CFI disagreed. It found that the registration of advertising slogans that include indications of quality or incitements to purchase the goods or services, whilst not expressly excluded from registration, may fulfil a function other than that of a trade mark. However, in order to be capable of functioning as a trade mark, the mark in question must be perceived immediately as an indication of commercial origin. The assessment is made first by reference to the goods or services covered by the application and, secondly, by reference to the perception of the relevant public.
Didi, as a grammatically and syntactically correct sentence that the English-speaking public will view as an invitation or encouragement to achieve their dreams, is not an indication of the commercial origin of the services provided under the Didi phrase. In short, Didi is a simple promotional and advertising message and no more. Accordingly, it was refused registration.
Why this matters:
Advertising slogans are increasingly as important as a brand name when marketing and creating a brand identity for products and services. However, they are notoriously difficult to register as trade marks for the very reasons expressed by the CFI in this judgment. There are a variety of inviting and encouraging phrases that have been denied registration (for example, LIVE RICHLY and BEST BUY).
The fact that on the other hand a variety of advertising slogans have been accepted as CTMs (as noted above) is irrelevant as the OHIM is not bound by past practice.
What about Nike's JUST DO IT?
Perhaps the most relevant illustration of this, and one suspects one of the reasons why Ashoka pressed their case, is Nike's registration of JUST DO IT. Their JUST DO IT CTM dates back to 1998, so just how did they get this registered when Ashoka failed with a mark that conceptually at least is not terribly different?
The answer may lie in prior established usage.
If brand owners and advertisers wish to treat their advertising slogans as trade marks and protect them as such, then an application will have a greater chance of success if there is a significant amount of use of that slogan prior to application such that the applicant can demonstrate acquired distinctiveness through use in accordance with Article 7(3) of the CTMR.
"TM" worth using from the start
The applicant should also consider treating the slogan as a trade mark from the very start, for example, by using the denotation "TM" consistently in conjunction with the slogan. The applicant should also consider taking action against unauthorised third parties using its slogan on the basis of common law rights in passing off. Finally, the applicant should always use the slogan independently of any other designation – readers may remember the difficulties Nestlé had registering the mark HAVE A BREAK due to the fact that it has always used that slogan in conjunction with the words HAVE A KITKAT.
In conclusion, brand owners needs to be realistic about the prospects of securing registration for slogans as the case law suggests this is going to be increasingly problematic absent any evidence of acquired distinctiveness through use.
On the other hand, whilst the previous registration of similar marks does not bind subsequent courts under EU trade mark registration practice and different considerations apply depending on the products and marketplace in question as well as previous usage, one can well understand Ashoka's persistence given Nike's success with JUST DO IT. One suspects that having taken the application this far, Ashoka may go all the way and take this to the ECJ. Watch this space!