“Great slogan, and a neat piece of branding too” thought Sykes Enterprises Inc of Florida, that is until they tried to register their catchphrase as a community trade mark.
Who: Sykes Enterprises Inc. of Tampa Florida
Where: The Court of First Instance of the Office for Harmonisation in the Internal Market (Trademarks and Designs) ("OHIM"), Alicante
The OHIM Court of First Instance rejected a second attempt by Sykes Enterprises Inc. of Florida to register their slogan REAL PEOPLE, REAL SOLUTIONS as a Community Trade Mark ("CTM"). The services in respect of which Sykes sought the registration included telemarketing, computer hardware maintenance and technical support services for the computer industry. The OHIM examiner refused the application initially on the grounds of lack of distinctiveness. An appeal to the Board of Appeal produced a similar result, but Sykes then appealed to the Court of First Instance of OHIM. The court first of all reminded itself that although advertising slogans were not excluded from becoming registered trademarks, they had to pass quite a strict test before being regarded as sufficiently "distinctive" to qualify. This test required that the slogan in question "could be perceived immediately as an indication of the commercial origin of the goods or services in question".
The court then looked at the relevant public who would be exposed to Sykes' use of this slogan. This was quite a sophisticated community, involved largely in working in information technology. In the court's view individuals like this would be well aware of the sort of marks which were likely to indicate a commercial origin and therefore have a branding role. They would on the other hand have relatively low awareness, the court considered, when it came to "purely promotional indications". Such indications, the court felt, would not be regarded by well-informed consumers as immediately decisive of the source of the product or service in connection with which the phrase was used.
If this was the case, the court said, then it seemed most likely that the use of the phrase REAL PEOPLE, REAL SOLUTIONS would not immediately indicate to the relevant public the origin of the product, but simply give "purely promotional, abstract information" which would be unlikely to be mentally registered as a trademark. This meant that in the view of the court REAL PEOPLE REAL SOLUTIONS would be perceived by the relevant public as primarily a promotional slogan based on its inherent meaning rather than as a trademark. As a result Sykes' appeal was refused and subject to any further appeal their attempt to register the slogan as a CTM has failed.
Why this matters:
When traders come up with a slick, economical phrase which is memorable and neatly sums up their product offering, it is always tempting to see if the phrase can be registered as a trademark. As this case underlines, however, the more descriptive and innately promotional that phrase is, the more difficult it will be to get it registered as a brand and this will be particularly the case when the public at which the slogan is aimed is relatively sophisticated.