When the European Court of Justice agreed ‘Baby Dry’ could be trade-marked for nappies, was it a false dawn for brand owners seeking to register phrases? We investigate the recent experiences of B&Q and Best Buy Concepts, Inc.
Who: B&Q Plc and Best Buy Concepts Inc
Where: The UK Trade Marks Registry and OHIM in Alicante, Spain
When: October 2003
In two quite separate cases, brand owners failed to get their multi-word trademarks registered. Homeware retailer B&Q Plc was trying to register "You can do it" as a trademark in the UK, whilst Best Buy Concepts Inc was trying to get their phrase "Best buy" registered as a Community Trade Mark across all 15 EU member states.
Both applicants were refused registration for similar reasons.
The UK Trade Mark Registry considered that "You can do it", which B&Q tried to register for services including "financial services and information," did not have sufficient distinctiveness, it was regarded by the officials as the sort of phrase other marketers might want to use in the course of trade and ought to be able to do so.
As such, therefore, the registry did not feel that the phrase was likely to "denote trade origin", so without long-established use of the phrase by B&Q before it applied for registration, which might have given it some chance of showing that it had acquired distinctiveness, there was no possibility of getting it registered.
In the "Best buy" case, OHIM's reasons for refusal were very similar. It took the view that the phrase would be regarded by the relevant public as "a mere promotional formula or slogan", which indicates that the services in question are the best buy possible in their category. As such, the words did not operate as an indication of where the services in question came from, so registration was refused.
Why this matters:
These decisions are in line with a recent UK trademark registry refusal to accept for registration WalMart's slogan "Our people make the difference".
Brand owners might have thought that they would fare better in cases like this following the European Court of Justice's decision to accept "Baby dry" for registration for nappies, (as reported previously on marketinglaw) However, it is quite clear that trademark registration officials will be astute to hold the line against accepting for registration any old phrase, which is at the end of the day merely descriptive of the products in question or any of their characteristics.
This is not to say of course that there may be other laws such as the UK's law of passing off, which could enable the B&Qs of this world to sue competitors if they used "You can do it" in respect of, for instance, competing houseware retail services. However, it is notoriously difficult to establish a case in passing off and it is always preferable to achieve a trademark registration and its concomitant monopoly right.