In this decision, the General Court (GC) said that the Board of Appeal (BoA) was right to reject an application for a declaration that LOVE TO LOUNGE, registered for clothing, footwear and headgear, was invalid. The mark was not descriptive and required “cognitive effort” on the part of consumers.
In August 2009, Primark Holdings applied to register LOVE TO LOUNGE as an EU trade mark for “clothing, footwear [and] headgear”. Registration was granted in January 2010. In 2013, Lidl Stiftung & Co KG sought a declaration of invalidity on grounds of descriptiveness and lack of distinctive character. Lidl’s application was rejected, and the BoA agreed. Turning to the GC, Lidl argued that the lower court erred in finding the expression “love to lounge” not descriptive and capable of indicating commercial origin. Lidl also claimed that its evidence was incorrectly assessed. The Court disagreed.
Lidl relied on the results of an online search to show that the expression “love to lounge” is common and descriptive. (Primark said at least one of these amounted to infringing use.) Lidl’s evidence was found to be inconclusive; screenshots were either undated or dated after the relevant date, and did not show use that was unequivocally descriptive. The BoA did not err or base its conclusion on insufficient evidence, said the Court, and nor was there any onus on Primark to prove infringing use. Since registered marks are presumed to be valid, it is for the applicant to invoke specific facts that call validity into question. Moreover, the applicant’s evidence must show the situation as at the relevant date, not later. The fashion industry is constantly evolving. Five years is long enough, the Court said, for the public’s perception of certain words to change “according to new trends and cultural globalisation”. There is nothing surprising in the Court’s assessment here. LOVE TO LOUNGE was not synonymous with “loungewear” or “loungers” in the sense of leisurewear, but simply a “vague and evocative message alluding to a particular interest or pleasure in relaxing”. Lidl failed to prove otherwise.
The Court gives a pithy summary of the case law on slogans. Laudatory marks are not incapable of distinguishing commercial origin; they may perform both functions. Slogans cannot be required to display “imaginativeness”, but they must not be perceived merely as a promotional formula. Lidl’s comparison with the unacceptable LET’S GET COMFORTABLE for furniture was unpersuasive. That slogan merely told consumers about goods that facilitated their comfort. By contrast, LOVE TO LOUNGE required some “cognitive effort” to link it to the goods concerned. It was not highly imaginative, perhaps, but “original to a degree which was likely to be remembered by consumers”. Ultimately, the case is a reminder that invalidity is for the applicant to prove, evidence should speak to the relevant date and no two slogans are equal.
• Remember that registrations are valid until proven otherwise – the evidential burden falls on the applicant for invalidity
• Evidence must show the situation as at the relevant date – five years may be enough for our perception of words to change
• Distinctiveness does not require imaginativeness, but should make the consumer think twice
This article was previously published by CITMA.