High Court recommends registration of pet food slogans

In Masterfoods Limited v Controller of Patents Designs and Trademarks, the High Court has overturned the controller's decision to refuse registration of the slogans 'top breeders recommend it' and 'developed with vets' as trademarks for pet food. The court examined the Community Trademark Directive and case law from the European Court of Justice (ECJ), concluding that the slogans are inherently registrable, and in any event have acquired a distinctive character through use.

Masterfoods Limited, an Irish subsidiary of Mars Inc, applied to register the slogans 'top breeders recommend it' and 'developed with vets' as trademarks for pet food. The controller of patents, designs and trademarks rejected the registration holding that the two slogans were devoid of distinctive character and lacked any imaginative or fanciful element. Although Masterfoods filed evidence demonstrating substantial sales and advertising under the two slogans, the controller held that they had not acquired a distinctive character through use in Ireland on the grounds that they had always appeared alongside Masterfoods's well-known trademark PEDIGREE CHUM. Masterfoods appealed.

The High Court allowed the appeal and overturned the controller's decision. It held that both slogans are inherently registrable and, in any event, have acquired a distinctive character through use. The court agreed with Masterfoods that the Community Trademark Directive, the Irish Trademarks Act 1996 (which implemented the directive), and subsequent case law of the ECJ and Court of First Instance has brought about "a major change to traditional trademark law".

The court applied the test established by the ECJ in Procter & Gamble v Office for Harmonization in the Internal Market (OHIM) (the BABY-DRY Case) and found that the slogans in question cannot be seen as a normal way of referring to pet foods or to their essential characteristics. With respect to the controller's contention that the slogans lacked any fanciful or imaginative element, the court cited the cases Bank für Arbeit und Wirtschaft AG v OHIM (the EASYBANK Case) and Erpo Möbelwerk v OHIM (the DAS PRINZIP DER BEQUEMLICHKEIT Case) as support for the proposition that a trademark should not be refused merely because it is not fanciful or imaginative.

The High Court also noted that, in any event, the slogans have acquired a distinctive character through use in Ireland. In reaching this decision, the court stated that it was influenced by the evidence showing that no other traders are using the slogans. Contrary to the conclusion of the controller, it stated that the fact that Masterfoods's slogans always appear alongside the trademark PEDIGREE CHUM strengthened rather than weakened Masterfoods's claim that the slogans are associated with its products.

The controller has appealed to the Supreme Court.

Kieran Heneghan, FR Kelly & Co, Dublin