The rise in popularity of vegan diets and plant based food products is driving a rapidly growing market no less so than in the field of plant based beverages. It is not therefore surprising that businesses try to increase their market share of this sector by means of catchy or controversial slogans.
Creating the perfect slogan which imparts just the right nuanced meaning to accompany an advertising campaign is no easy task and rightly businesses seek as much benefit and competitive advantage from this creative endeavor as possible. One way of doing this is to protect the slogan by means of a trade mark registration. A trade mark registration is a powerful legal monopoly which, broadly speaking, affords the owner the right to take legal action against third party uses of either an identical or similar trade mark used in the context of identical or similar goods/services.
Newly created slogans are registrable as trade marks provided they meet the general qualifying criteria applied to all trade marks. These are that the slogan must be distinctive, it must not be descriptive or generic in the context of the goods or services for which it is used and it must not already be registered by another entity.
Invariably the most difficult hurdle to overcome when seeking registration of a slogan is proving that the slogan is sufficiently distinctive such that it can fulfil a trade origin identifying function. At its most fundamental, the question to be asked is whether consumers will, on seeing the slogan, immediately associate it with the goods/services of a single commercial undertaking. Because slogans by definition seek to explain something about a business, for example, its ethos or the quality of its product, they can very easily fall into the category of trade marks which, from the legal perspective, are too descriptive or possibly just too bland to qualify for registration. However, assessing the distinctiveness of trade marks is not an exact science and is to a degree subjective. There is a sliding scale of distinctiveness and slogans very often fall on the borderline of what is and is not acceptable. As a result, applications to register slogans as trade marks are often rejected at first instance and subjected to the wisdom and decisions of higher authorities. This was the case for Oatly AB’s application to register the slogan IT’S LIKE MILK BUT MADE FOR HUMANS.
Oatly is no stranger to legal battles or controversy. It slogan IT’S LIKE MILK BUT MADE FOR HUMANS was deemed to disparage and discredit cow’s milk by a Swedish court. More recently it has come under fire for its investment decisions and has been accused of driving a wedge between children and parents as a result of an advertisement which questioned how “woke” the parents of Gen Z are. It will no doubt therefore be pleased to have scored a victory at the General Court of the European Union in its quest to register IT’S LIKE MILK BUT MADE FOR HUMANS as an EU Trade Mark.
Oatly filed an application to register the slogan IT’S LIKE MILK BUT MADE FOR HUMANS at the European Union Intellectual Property Office (the EUIPO) in March 2019 for a variety of goods including various dairy and milk substitute products in class 29, oat based beverages in class 30 and preparations for making beverages in class 32. The EUIPO refused the application in relation to these goods on the basis that the slogan was devoid of any distinctive character because it would “simply be perceived by the relevant public as a laudatory promotional slogan, the function of which is to communicate an inspirational or motivational statement. The relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods in question, namely that they are or contain milk substitutes which are like real milk …….but contain ingredients that are more apt for human consumption than real cow’s milk”.
Oatly appealed the decision to the General Court of the European Union. As with virtually all cases concerning the registrability and inherent distinctiveness of slogans, the arguments and submissions of both parties centred on whether the slogan could perform a trade origin identifying function. A slogan should only be refused registration if it would be perceived solely as a mere promotional statement. If, on the other hand, a slogan would be perceived as an indicator of the commercial origin of goods then, even if it also performs a promotional function, it qualifies for registration. A useful question to be considered in this context is whether consumers would be in a position to make a repeat purchase of the product if they enjoyed it, or alternatively to avoid buying the product again, simply by reference to the slogan.
The Court reiterated the well-known legal principles relevant to the registration of slogans as trade marks; slogans should not automatically be denied registration simply by virtue of being a slogan, slogans can have both a promotional and origin indicating function and the former should not invalidate the latter and slogans do not have to display more imaginativeness than any other type of trade mark.
The EUIPO’s view was that there is a commonly held belief in society that animal derived milk is not good for the human body. It was also of the opinion that consumers understand the primary purpose of milk is as a foodstuff for calves rather than for humans. Accordingly, the EUIPO held there is nothing intriguing about the juxtaposition of “IT’S LIKE MILK” with “BUT MADE FOR HUMANS”. The slogan conveys the simple factual message that Oatly’s goods are similar to milk but more suitable for humans than is animal derived milk. Because consumers know that the main function of milk is to feed animals, the slogan IT’S LIKE MILK BUT MADE FOR HUMANS would be perceived solely as a promotional slogan, the function of which is to communicate a value statement.
Oatly on the other hand argued that the dominant perception of milk in society is as a product for human consumption rather than food for calves. It pointed out that there had been a significant and controversial reaction to the IT’S LIKE MILK BUT MADE FOR HUMANS advertising campaign. This included complaints to the Spanish advertising regulatory organisation that the slogan falsely implies that milk is not for human consumption. The very fact that the slogan incited such heated debate was evidence in itself that the slogan did not merely inform the public about the suitability of the product for human consumption. Because consumers overwhelmingly associate milk with a human foodstuff, the slogan IT’S LIKE MILK BUT MADE FOR HUMANS has the effect of jolting consumers into remembering that this is not necessarily the case. The slogan is therefore provocative and, in trade mark legal speak, it triggers a “cognitive thought process” which makes it easy to remember and therefore capable of indicting a trade origin. The General Court agreed with Oatly adding that the presence of the coordinating conjunction “but” in the middle of the slogan had the effect of calling into question the commonly held perception of milk as a human foodstuff.
This is a welcome decision for brand owners who often face an uphill battle when seeking to protect slogans as trade marks. Slogans are frequently labelled as too banal, simplistic or laudatory to qualify for registration. This decision shows that a cleverly constructed and memorable slogan can benefit from the legal protection afforded by a registered trade mark.