Coca-Cola raised a glass to success recently following the acceptance of its slogan mark NO HALF MEASURES for educational, entertainment, sporting and cultural services in Class 41 (O-079-10).
Its successful appeal against the UK-IPO's refusal marked a turning of the tide for slogan marks in the UK and EU, and clears the path for registration of advertising and promotional slogans that are capable of surprising, provoking, amusing or otherwise adhering to the memory in a way that makes them capable of distinguishing. The mere fact that they are also seen as advertising slogans should no longer bar the way to protection.
Short Measures for Coke
The decision comes after the ECJ's ground-breaking decision in Audi (VORSPRUNG DURCH TECHNIK; C-398/08 P) last January, in which it laid down new guidance for examining the distinctiveness of slogan marks.
Coca-Cola filed its application nearly two years before Audi, and the application was rejected on the basis that NO HALF MEASURES was a slogan which would be seen as an advertising or promotional message denoting that the services provided were of high quality and would meet high levels of expectation from consumers. Coca-Cola appealed, and by the time the appeal was heard Audi had been decided. Its impact on the case was forceful.
In her judgment on the appeal, the Appointed Person noted that there had been a rather over-enthusiastic application of the principles relating to slogan marks set out in Erpo Möbelwerk (DAS PRINZIP DER BEQUEMLICHKEIT; C-64/02 P), and in particular its finding that the public was not used to perceiving slogans as indicators of origin and that therefore it might be more difficult to prove that such marks were in fact capable of distinguishing. Although Erpo was also clear that no special criteria were to be applied to slogans, and that in particular there was no requirement that a slogan display "imaginativeness" or a "conceptual tension which would create surprise and so make a striking impression," the UK-IPO, OHIM and others had taken the decision to require, as a general rule, proof of acquired distinctiveness in respect of most slogan marks.
The Audi judgment was therefore a breakthrough, because in it the ECJ confirmed that the mere fact that a slogan was likely to be perceived, and might even be perceived primarily, as an advertising or promotional message, was not enough on its own to justify a finding that it lacked distinctiveness. Indeed, slogan marks were inherently likely to carry out a dual function of both distinguishing origin and conveying an objective message, likely to be laudatory. The objective message was likely to come first; but that did not undermine the force of a parallel origin-indicating message. The mere fact that other entities might in principle use the same laudatory statement in respect of their own goods or services was not in itself proof that a slogan was not distinctive.
The Court in Audi had also noted that where a slogan mark happened to have a number of meanings, or constitute a play on words, or would otherwise be likely to be perceived as imaginative, surprising and unexpected and, as a result, be memorable, such factors were likely to demonstrate that in fact the slogan had a distinctive character. The best slogan marks were indeed designed to have such an impact, which made Audi of wide relevance in the field. The Court was at pains to point out, though, that such characteristics were not necessarily required.
Turning to NO HALF MEASURES, the Appointed Person thought that Coca-Cola's mark had been given a rather short measure. In the absence of evidence, she was not convinced that the phrase was a well-known expression, but even if it were, that fact alone would not deprive it of the ability to distinguish the claimed services.
It was clear from the evidence and submissions of both the Applicant and the UK-IPO that NO HALF MEASURES was capable of a number of different meanings, ranging from "no stone left unturned", to "completeness", to "an opaque reference to the ‘capability' of the services", to "doing something in a forceful or determinative way". The hearing officer had dismissed this fact entirely, though, on the basis of the ECJ's guidance in DOUBLEMINT that a sign must be refused registration if at least one of its meanings was descriptive (C-191/01 P).
The Appointed Person noted that this approach was wrong, though, since DOUBLEMINT had related only to descriptiveness objections, whereas NO HALF MEASURES had met with an objection based on non-distinctiveness. It was clear that absolute ground objections had to be considered separately, based on the particular public interest underlying each one, and as no descriptiveness objection had been raised in this case, DOUBLEMINT was not relevant.
In fact, following Audi, the multiplicity of possible interpretations for NO HALF MEASURES was a factor pointing toward distinctiveness, not away from it.
The hearing officer had based his decision on the fact that it was possible for NO HALF MEASURES to be used in a laudatory, promotional sense, and that the Applicant had not provided evidence that the mark had been used sufficiently in a trademark sense to have acquired distinctiveness. However, the Appointed Person regarded this as a "Catch 22", since it was clear that all slogan marks would tend to be capable of this dual function. Were that dual function to rule them out from acceptance prima facie, then no slogan mark would be acceptable in the absence of acquired distinctiveness.
The Appointed Person regarded NO HALF MEASURES as having "a certain originality or resonance" in respect of entertainment services that made it easily memorable. Although in respect of sporting activities it might be regarded as an exhortation to high performance, there was only a casual link with the goods and services, which the average consumer would have to interpret in order to understand. Finally, in respect of educational services, NO HALF MEASURES was "atypical of marketing speak" in that area and was therefore likely to create "an element of unexpectedness" for the consumer.
Taking all these factors into account, the Appointed Person overturned the hearing officer's decision and allowed the appeal.
It might be said that there were no half measures in Coca-Cola's efforts to have the original decision overturned. That, though, is aptly illustrative: the mere fact that Coca-Cola's slogan conveyed an objective message did not in itself mean that the slogan was not capable of distinguishing the services claimed.
The case turned on an examination of the inherent distinctiveness of the slogan, bearing in mind its range of meanings, in respect of the services claimed. In this case, the hearing officer had carried out no such specific examination, on the basis of a general finding that the slogan was capable of being understood in a laudatory, promotional way. The different outcome when the Appointed Person carried out the examination shows the importance of considering a slogan mark against the specific goods and services of interest, and accepting, at the same time, that there will necessarily be some understanding of the mark as a promotional message, and that such an understanding, in itself, is not necessarily an indication that the slogan lacks distinctiveness.
With this application of the Audi principles, slogan marks in the UK have graduated into full acceptance as registrable marks for which evidence of acquired distinctiveness is no longer a sine qua non.
The benefits to businesses are immense, in the form of a greater ability to protect their creative and financial investment in memorable, distinctive advertising straplines and slogans. When it comes to realising this potential, other businesses should take no half measures, too.