Slogan rejected for being “banal”
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In Meredith Corp v Office for Harmonisation in the Internal Market (OHIM) (Case T-524/09, September 7 2011), the General Court has upheld OHIM's partial refusal on absolute grounds to register the word mark BETTER HOMES AND GARDENS.
In September 2008 Meredith Corp applied to register BETTER HOMES AND GARDENS in Classes 16, 35 and 36 of the Nice Classification.
OHIM granted registration in respect of the goods/services applied for in Class 16 and, with one exception, Class 35. However, it refused registration of the mark for the services applied for in Class 36 (in respect of insurance, financial and monetary affairs, real estate affairs, and consultancy, advisory and information services in relation to the same) and auctioneering services in Class 35 on the grounds that it was devoid of distinctive character. Meredith appealed in respect of the Class 36 services, but the examiner's decision was upheld by the Second Board of Appeal of OHIM in September 2009.
The board considered the mark to be an advertising slogan which conveyed only a "banal, laudatory and informative message", without indicating a particular business origin. The mark was therefore ineligible for registration in respect of Class 36 services. Meredith appealed to the General Court.
Marks which are commonly used in the marketing of the goods and/or services for which registration is sought were noted by the General Court to be incapable of performing the essential trademark function of identifying the origin of the goods and/or services. However, it recognised that the registration of an advertising slogan as a trademark is not excluded merely on the basis that the mark may also be used for advertising purposes. The distinctive character (or lack thereof) of such marks must be assessed on the same basis as any other mark.
Meredith did not dispute the Board of Appeal's finding that the Class 36 services applied for were directed at the average English-speaking consumer. Agreeing with the board's approach, the General Court noted that, if the English-speaking public of the European Union did not perceive the mark BETTER HOMES AND GARDENS to indicate the commercial origin of the services, OHIM's refusal of the mark would be justified.
The General Court accepted Meredith's submission that the assessment of whether a compound word mark such as the one at issue was devoid of distinctive character should take into account the overall impression created by the mark. However, the Board of Appeal had assessed the mark BETTER HOMES AND GARDENS as a whole and found that the relevant public would simply perceive it as an indication that Meredith offered insurance, financial, real estate and related services in Class 36 relating to "(better) homes and gardens". The board further considered that other undertakings may have a legitimate reason to use the same or a very similar slogan.
The court agreed with the board's assessment of the mark as "banal". The mark was not of an unusual nature which would lead the relevant public to make an association as to trade origin. Meredith had also failed to provide any evidence or argument to support its assertion that the mark had a certain level of originality and fancifulness, and this assertion was therefore rejected by the court as unfounded.
The court endorsed the board's finding that BETTER HOMES AND GARDENS would be understood by the relevant public as suggesting that the services provided would "aid in acquiring better homes and gardens". Further, Meredith's argument that its mark was not directly descriptive of the services applied for was irrelevant (and, in any event, not the grounds upon which the board had refused the registration).
In summary, the General Court found that the mark BETTER HOMES AND GARDENS:
- would be perceived by the relevant public as being laudatory in nature;
- informed the relevant public of the specific nature of the services offered;
- was not particularly original and did not require interpretation or thought by the relevant public; and
- may be used for legitimate reasons by other undertakings to promote similar services to those in Class 36.
Accordingly, the mark was devoid of distinctive character in respect of the Class 36 services and OHIM's partial refusal to register the mark was upheld. The court noted that the distinctive character of a mark is assessed in the context of the goods and/or services for which registration is sought. It was therefore irrelevant whether the mark had been registered for other goods and/or services.
The case serves to highlight that, although advertising slogans and phrases of a general laudatory nature may be registered as trademarks, there is generally a presumption that such phrases are devoid of distinctive character and are incapable of acting as an indicator of origin. An applicant wishing to register such a mark would be well advised to file any available evidence as to how the relevant public does in fact identify the phrase with the goods and/or services of the applicant.
Laura Perkins and Chris McLeod, Squire Sanders & Dempsey (UK) LLP, London
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