Slogans are useful tools in brand advertisements. However, as they often consist of ordinary words and phrases which are laudatory in nature, slogans generally do not meet the distinctiveness requirement for purposes of trademark registration in the absence of evidence of use. The following recent case reminds us of this.
Arangur UG (haftungsbeschrankt) (applicant) applied to register “PARTY LIKE GATSBY” under Classes 41 and 43 (Application No. 40202006901U) for several entertainment and hospitality services. The examiner’s three rounds of objections stated and maintained that the mark lacked distinctiveness, considering that the mark was reminiscent of the novel The Great Gatsby, a tale about a man invited to an extravagant party hosted by the eponymous host Jay Gatsby in the 1920s. The examiner invited the applicant to submit evidence of use, but the applicant declined. Having failed to persuade the examiner to accept the mark after two rounds of submissions, the applicant applied for an ex-parte hearing.
The intellectual property (IP) adjudicator considered whether the mark was inherently distinctive in the absence of evidence of use. The applicant relied on a number of EU cases, which are persuasive in Singapore but not binding otherwise, and argued that:
- It was incorrect of the examiner to interpret the word “Party” as a noun (conveying the idea that the applicant’s services allow consumers to host, like Gatsby) rather than as a verb, to partake in an enjoyable social setting;
- The mark conveyed contrasting images of fun and enjoyment of parties versus the aloofness and loneliness of Gatsby the host; and
- The mark would trigger questions in the minds of the relevant public as to the who, how, and why.
The IP adjudicator rejected the applicant’s arguments. While he considered that the relevant public might have a general idea of the novel and associate Gatsby with parties, he opined that they would not know enough about it to appreciate the contrast the applicant was alluding to. He also rejected the applicant’s proposal to delete services relating to the organization and planning of parties from the specifications, as these effectively formed a package of services.
Consequently, the IP adjudicator maintained the distinctiveness objection.
This article was first published by the International Trademark Association on inta.org.