In 2021, the Applicant created a new concept of drinks produced locally and carbon neutrally and opted for the brand DRINK SOCIALLY RESPONSIBLY.

He decided to protect his brand by filing a trade mark application in Classes 32 (non-alcoholic beverages) and 33 (alcoholic drinks, except beers).

First instance decision

His application received an absolute ground objection based on the lack of distinctiveness of the sign (section 3(1)(b) of the Trade Marks Act 1994). The Examiner considered that the mark could not function as a designation of origin and therefore was not acceptable.

At the hearing, the Applicant argued that his mark was distinctive for three reasons:

1. the two obvious concepts allude to a new one. We are all aware of the DRINK RESPONSIBLY injunction recommending avoiding the overconsumption of alcohol. The second concept is DRINK SOCIALLY; also, self-explanatory. The Applicant claimed that the conjunction of these two concepts alludes to the third concept of social responsibility in relation to drinking.
2. the mark sparks a cognitive process in the mind of the consumer who will wonder what social responsibility means in this context.
3. it is grammatically odd to have two adverbs side-by-side and this adds to the distinctiveness of his mark.

At first instance, the Hearing Officer dismissed every argument raised by the Applicant. The Hearing Officer assessed the distinctiveness of the mark by reference to the immediacy or first impression the mark had on the average consumer. He stated that the mark was not in any way imaginative, surprising or unexpected. He added that in relation to beverages, it merely encourages the consumer to drink socially responsibly.

Appeal decision

This decision was appealed to the Appointed Person. In his decision, Hobbs KC neatly summarised the applicable test and case law, citing two key cases (Audi [1] and Oatly [2]).

In Audi, the CJEU decided that “the need for a measure of interpretation on the part of the public does not negate the possibility of a finding of distinctiveness”. They added that the criteria to assess the distinctiveness of a slogan is the same as for a word mark. In summary, the slogan may be perceived as a promotional message but it also must be an indication of origin to be a trade mark.

In Oatly, the General Court stated that “A mark must be recognised as having a distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concern”.  

Even though AUDI says it’s acceptable if the cognitive process requires a little more interpretation, the more consistent message we’re getting from DRINK SOCIALLY RESPONSIBLY, like OATLY and REAL PEOPLE REAL SOLUTIONS, is that the immediate first impression can be deciding.

Here, the Appointed Person decided that the sign DRINK SOCIALLY RESPONSIBLY “would call on people in plain and straightforward terms”. The grammatical oddity of the slogan and it having more than one meaning was insufficient in this case. The message conveyed by the sign was considered so general and the terms so direct that the sign lacked capacity to individualise the goods to one commercial origin. Social responsibility is an important element of society’s questioning nowadays. However, the plain English used, and the lack of cognitive process created by this sign meant it fell short on the hurdle for distinctiveness.

How to make your slogan distinctive

The Appointed Person listed various factors that may establish distinctiveness for a slogan:

• numbers of meanings,
• play on words,
• element of intrigue/surprise,
• originality,
• unusual syntax.

However, these are only factors which assist in establishing distinctiveness.  Ultimately, it must be perceived as an indication of commercial origin.

This case is now the new gold standard, used as guidance by every UKIPO Examiner when assessing the distinctiveness of a slogan.

Onwards and upwards - despite the initial disappointment there might be some other ways to protect a slogan that isn’t immediately distinctive. If the Applicant decides to use it, after several years of use, a mark can acquire distinctiveness. This will obviously have to be proven with evidence to obtain registration. But there is still a possibility in the future to see this mark on the register.

[1] C-398/08P Audi AG v OHIM (VORSPRUNG DURCH TECHNIK) EU:C:2010:29.

[2] T-253/20 Oatly AV v EUIPO (IT’S LIKE MILK BUT MADE FOR HUMANS) EU:T:2021:21