In the recent judgment the General Court decided that the word sign OTHER COMPANIES DO SOFTWARE WE DO SUPPORT is devoid of distinctive character for services relating to computer software. The General Court has confirmed that it is incorrect to apply to marks being slogans registration criteria which are stricter than those applicable to other types of signs. However, still such slogan cannot be perceived by the relevant public only as a mere promotional formula and some further interpretation is required so that its meaning is not equivocal.

Judgment of the General Court of 15 February 2023 in the case  Rimini Street, Inc. v EUIPO, T‑204/22

Facts of the case

On 30 September 2020 Rimini Street, Inc. obtained international registration for the word sign OTHER COMPANIES DO SOFTWARE WE DO SUPPORT under no. 1559651. International registration designated the European Unionand was for services in class 42 such as:

Computer software consulting services; technical support services, namely, providing maintenance services for enterprise and database software; technical support services, namely, providing troubleshooting of enterprise and database software problems; maintenance of computer software; technical support services, namely, troubleshooting computer software problems’.

The EUIPO refused to grant protection to the trademark on the ground that it was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001. The applicant appealed the decision but the EUIPO Board of Appeal dismissed the appeal. It found that the word sign is merely a promotional formula that will not be perceived by the relevant public as an indication of the commercial origin of services in class 42. The relevant English-speaking public would understand the mark as meaning that the holder provided advice and support with regard to software which was created by other companies.

Rimini Street brought an action for annulment before the General Court. It argued among others that: (i) in order to arrive at the meaning interpreted by the Board of Appeal several other words had to be added to the contested mark, (ii) the word sign can have several meanings, and that all of those meanings also require the addition of words, (iii) the mark conveys a vague meaning (iv) the grammatical structure of that mark and the repetition of the verb ‘do’ contribute to distinctive character of the mark.

Judgment of the General Court

The General Court dismissed the action of Rimini Street. It agreed with the assessment of the Board of Appeal that the sign OTHER COMPANIES DO SOFTWARE WE DO SUPPORT has no distinctive character.

The General Court stated that the relevant public consists of the English-speaking general public and of English-speaking professionals in the European Union. It pointed out that average consumers are not in the habit of making assumptions about the origin of goods on the basis of slogans. Further, the level of attention of the professional public may be relatively low when it comes to promotional indications.

In the General Court’s opinion the Board of Appeal correctly assessed that the mark applied for is a combination of common English words and as a whole, it complies with the rules of English grammar. The mark conveys a clear and unequivocal message, which is immediately perceptible and does not require any interpretative effort on the part of the average English-speaking consumer. The General Court further explained that the relevant English-speaking public will break down the expression ‘other companies do software we do support’ into two sentences between which there is a logical connection, namely ‘other companies do software’ and ‘we do support’, which have a clear meaning for that public and which are grammatically correct. In effect, the relevant public will naturally perceive the expression as a mere promotional formula or a slogan which is intended to highlight the positive qualities of the services and of the provider of those services.

Comments

The General Court judgment confirms that protecting slogans as trademarks is very challenging. Although slogans are complex phrases and the stricter criteria for registration cannot be applied, they need to have a certain level of originality or require some interpretation by the relevant public to be registered as a trademark. The use of common words, basic grammar and syntax rules that provide for clear meaning tactically eliminates the chances of obtaining protection.