Slogan mark refusal overturned by Brussels court

The Brussels Court of Appeal has reversed a decision of the Benelux Office for Intellectual Property (BOIP) and has allowed registration of Nestlé Waters' application for the slogan mark ON A JAMAIS BU ÇA! (meaning 'one has never drunk that!') (Docket 2003/AR/2434, March 23 2007).

Nestlé Waters markets non-alcoholic beverages including sparkling waters under, among others, the trademark PERRIER. It launched a new line of flavoured PERRIER waters under the mark FLUO. It promotes FLUO water by way of the ON A JAMAIS BU ÇA! slogan. The slogan was registered in France in 2002 and Nestlé Waters applied for an international registration. In 2003 the BOIP, however, rejected the Benelux part of the international application as descriptive and lacking distinctiveness. Nestlé Waters appealed.

The Brussels Court of Appeal has now reversed the BOIP's decision. It accepted Nestlé Waters' argument that the slogan ON A JAMAIS BU ÇA! will be perceived as a pun on the French expression 'On a jamais vu ça!' (One has never seen that!). The court agreed that the implied reference to that expression makes the slogan original, humorous, striking, unusual and fanciful which in turn makes it highly memorable. The pun also conveys sensations of novelty and surprise.

The court further stated that the slogan is not customary in connection with non-alcoholic beverages and would not be perceived as mere promotional language by the relevant public. The court added that notwithstanding its evocative and suggestive nature, the slogan was arbitrary, vague and equivocal when applied to the goods concerned. In addition, the court noted that when rejecting the mark, the BOIP had failed to establish that the slogan at issue might in the future become a customary designation for non-alcoholic beverages.

The court concluded that neither freedom of trade nor the public interest required that the slogan be kept free for use by the applicant's competitors.

The decision is in line with earlier case law of the Brussels Court of Appeal, which has reversed, among others, refusals to register the slogan marks L'ACHAT QUI RAPPORTE (French for 'The winning purchase') in connection with retail services and WIJ GAAN VOOR VERS (Flemish for 'We are going for fresh') in connection with foodstuffs.

Nicolas Clarembeaux, Altius, Brussels