GC objects to Puma's "Forever Faster" slogan mark
The well-known sportswear company, Puma, has failed in an attempt to register its tagline FOREVER FASTER as a trade mark before the European Union Intellectual Property Office (EUIPO). This article looks at whether this decision from the General Court in Europe is fair and well-reasoned in light of the EUIPO's continued objection to slogan marks which consist of ordinary every day words.
Puma's initial application to register FOREVER FASTER was filed in Germany for a range of goods including clothing, footwear and a range of sports equipment. The application proceeded to registration and Puma, using the Madrid system, then sought protection in another 30 territories including the EU.
The EUIPO examiner held that the mark was both descriptive and also lacked the necessary distinctive character for the mark to be registrable in the EU. This decision was upheld by the First Board of Appeal stating:
- the relevant public would immediately construe, without any analytical effort, the message conveyed by the expression "forever faster", as referring to 'speed with a long duration'
- the mark FOREVER FASTER would be perceived as a simple laudatory formula or information on the desired qualities and purpose of the goods in question, namely to help their users become "constantly faster". (Keep in mind here that the specification includes hats, cricket bats and tennis racket bags and that the office is required to consider the distinctiveness of a mark in relation to each of the goods claimed.)
- the mark contained no element enabling the relevant public to perceive it as an indication of the commercial origin of the goods in question and was not unusual in the sporting sector.
Puma appealed the case to the General Court which has now handed down its judgment.
Early on in paragraph 16 the court confirms that the distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception which the relevant public has of it. This was decided in Audi's earlier application for VORSPRUNG DURCH TECHNIK deemed registrable in 2010 by the Court of Justice, the highest court in the EU. The General Court also noted earlier decisions confirming that use of a mark as a promotional formula has no bearing on its distinctive character. Notwithstanding this the court agreed with the Board of Appeal that the mark applied for was likely to be perceived "only" as a promotional formula (paragraph 35).
Much of the judgment discusses the meaning attributed to the words FOREVER and FASTER. The General Court concluded however that the mark applied for, taken as a whole, describes the desired quality or characteristics of the goods in question. Focussing on footwear, the General Court stated (paragraph 32) better results in terms of speed may be achieved thanks to the specific characteristics of a pair of shoes, such as the use of lightweight materials, a flexible structure, or the fact that they are comfortable to wear. Apparently, the applicant failed to show that the Board of Appeal made an error of assessment in finding that the words "forever" and "faster" would be perceived by the relevant public as referring to a permanent or continuous increase in speed.
Applicants for slogan marks at the EUIPO have been well aware in recent years, following the Audi decision, that to try and gain acceptance for such a mark there is a requirement to show there exists a presence of a play on words or an imaginative, surprising and unexpected expression to establish that an advertising slogan has distinctive character. Unfortunately for Puma, the General Court concluded that FOREVER FASTER has no particular originality or resonance, nor does it possess an ambiguity likely to trigger in the mind of the relevant public a cognitive process requiring any particular effort (paragraph 39). To make its point the General Court added, the mark is a simple laudatory statement which is descriptive of the qualities of the goods in question and devoid of any characteristics allowing it to be regarded as intrinsically distinctive.
Puma also tried another well-trodden path in seeking to gain acceptance of mark by providing examples of both similar and identical marks previously registered before the EUIPO and elsewhere. Puma argued that the Board of Appeal did not provide any specific comment explaining why the earlier registrations did not constitute valid precedents and, likewise regarding the fact that FOREVER FASTER had been registered and approved in many other countries. Many brand owners will be familiar with the court's response that (i) the EUIPO has to follow the language of the regulation (thereby, for all practical purposes, ignoring acceptance of the mark anywhere else); and (ii) as the mark was deemed devoid of any distinctive character, the previous acceptance of other similar marks was not relevant.
Is the EUIPO right to uphold what appears to be a higher threshold for accepting slogan marks? Possibly, however this inward looking stance may jar with brand owners who are likely to expect a level of consistency when seeking protection for their marks. It is notable that the EUIPO is out of line with the numerous other territories where Puma has sought to protect FOREVER FASTER. The mark has been accepted and registered in Australia, the US and New Zealand, and approved in Canada and South Africa. We also believe that in another English speaking country, the United Kingdom, Puma would be similarly successful. Whilst there may be more momentous negotiations going on elsewhere within the EU, perhaps a meeting between the EUIPO and some of their national counterparts in Europe to discuss levels of consistency and interpretation of the Trade mark Directive wouldn't go amiss?
Case details at a glance
Jurisdiction: European Union
Decision level: General Court
Parties: Puma SE v EUIPO
Date: 09 March 2017