A non-distinctive slogan that could apply to any undertaking or a distinctive trade mark which was eminently registrable for educational, entertainment and sporting activity services? Joseph Kitchingham opens the ring pull on Coca Cola’s recent appeal.
Who: The Coca Cola Company
When: February 2010
Law stated as at: 28 February 2010
On 28 April 2010, the verdict was handed down in an appeal to the “Appointed Person” of the UK Intellectual Property Office (IPO) by The Coca Cola Company against a decision made on behalf of the Registrar.
The case concerned an application by Coca Cola to register the word mark NO HALF MEASURES as a trade mark in relation to various services in class 41 including
“education; providing of training; entertainment including musical entertainment; sporting and cultural activities….;including all of the aforementioned services provided by telephone or online from a computer database…”
Key to the granting of a trade mark is evidencing its “distinctive nature”. It was on this point, the need to satisfy the test under section 3(1)(b) Trade Marks Act 1994, that the Registrar emphasised the need for all marks including slogans to satisfy the test of distinctiveness. Unfortunately for Coca Cola, it was decided at this stage that the “words fail to designate from a single undertaking” but were instead deemed a mere “promotional statement”.
Coca Cola appeals
The Coca Cola Company appealed this decision to the “Appointed Person,” who in this case was Professor Ruth Annand.
Prof. Annand referred to the apparent circular or “Catch 22” situation faced by those applying to register slogans as trade marks. This was created by the normally dual functions of a mark that consists of an advertising slogan or promotional statement.
With this type of branding device, it will always be possible to envisage instances of the mark being used in an objective, non-trade mark sense. However, this should not necessarily render the slogan devoid of distinctive character and disqualify it altogether from registration as a trade mark.
The correct approach in these cases was to assess the distinctive character of the trade mark in relation to the goods or services for which registration was sought, not in relation to the company or organisation providing the services.
“Good name for a band”
Bearing in mind these points, Prof. Annand concluded that the slogan WAS possessed of distinctive character in relation to entertainment services and the same applied to cultural activities. She commented that NO HALF MEASURES would be a good name for a band and that the mark had a certain originality or resonance for entertainment services which made it easy to remember.
In the context of sporting activities, she concluded that the slogan clearly had a potential objective function as an exhortation to perform at one’s best. However she also determined that the slogan illustrated the “dual function” issue she had already identified as it was also in her view perfectly capable of indicating trade origin.
“Atypical of education marketing speak”
As for “education and training”, she was persuaded that the phrase was “atypical of marketing speak in the area” and would have an “element of unexpectedness” for the consumer. This meant that in her view the message conveyed by the mark was not so “ordinary” that it could not also be distinctive of trade origin.
For all these reasons, she upheld Coca Cola’s appeal for all the requested services, and subject to any further appeal or challenge, their application to register NO HALF MEASURES was free to proceed.
Why this matters:
Any current or future trade mark applicant who is struggling to obtain a trade mark registration for a slogan will feel their spirits rise following the “dual function” reasoning of Prof Annand. Her comments and clarification of the “Catch 22” situation may well be useful in helping to push through future applications for slogans.
Others may be dismayed that following the arrival on the scene of registrable slogans by way of the Trade Marks Act 1994, monopoly rights are slowly but surely being granted in respect of ever greater swathes of apparently commonplace English idioms, thus forcing advertisers and promoters to use ever greater care when choosing headlines, sub brands, promotion names and even body copy, lest third party rights will be infringed.