More’s the Pity - Rules on Distinctiveness

A recent General Court decision emphasises the difficulty of registering slogans as trade marks, including for specialised medical devices. Medrobotics Corp had applied for registration of SEE MORE. REACH MORE. TREAT MORE. as an EU trade mark (Medrobotics v EUIPO T-555/18) in relation to articulated arms and probes for medical diagnostic and surgical use. Medrobotics’ application was rejected twice by EUIPO: on 3 April 2019, the General Court upheld that rejection.

SEE MORE. REACH MORE. TREAT MORE. was rejected under Article 7(1)(b) of Regulation 2017/1001, for lack of any distinctive character. The General Courts’ ruling helpfully unpacks various aspects of the arguments made by Medrobotics in relation to its application, and illustrates why such arguments fell short in the present case.

Medrobotics argued that the “unusual and incorrect structure” of the sentences comprising the mark would prevent the relevant public from understanding its precise meaning. The relevant public for the purposes of assessing distinctiveness in this instance was held to be the professional public displaying a low level of attention, by virtue of the good belonging to Nice Class 10 (medical devices).

The CJEU held against Medrobotics, and found that the composition of the mark, consisting merely of verbs and a repeated adverb, would not prevent the relevant public from immediately understanding its meaning. In fact, the relevant public would understand “without the slightest hesitation” the mark to mean: See more. Reach more. Treat more.

Medrobotics ran additional arguments, including an attempt to rely on a weak connection between the goods covered by the mark and the relevant public’s perception of SEE MORE. REACH MORE. TREAT MORE. c.f. the successful argument advanced in relation to WET DUST CAN’T FLY. Further, Medrobotics sought to argue that the brevity, originality and concision of its mark, combined with the repetitious “more” element, conferred distinctive character.

In respect of the weak connection argument, the court found that mere absence of information in relation to the goods concerned was not sufficient to render a mark distinctive. Regarding the brevity, originality and concision conjecture, the CJEU held that the mark applied for lacked any unusual syntactical or grammatical elements, and also noted that the repetitious use of “more” was a feature commonly used in advertising to make slogans stronger. The latter was therefore insufficient to endow the mark with striking features, and could not be said to confer distinctive character.

Whilst the criteria for distinctiveness in relation to slogans are not stricter than those for other types of signs, as the present case makes clear, the courts require more, need more, demand more than mere adverbial repetition.

This post has been co-authored by Katherine Barrett