I’m lovin’ it

Lovin’ it! – Does this phrase sound familiar?

You’re probably thinking of McDonald’s, but interestingly, it wasn’t McDonald’s that filed this slogan as a trademark in the European Union. A Greek company applied for this figurative mark for chocolate beverages. McDonald’s, well-known for its slogan ‘I’M LOVIN’ IT!’, was not pleased and filed an opposition against the application.

Anyone familiar with the trademark protection of slogans knows that registering slogans can be quite challenging. Slogans often have a promotional character, which doesn’t align well with trademark protection. McDonald's has been able to register the wordmark, but the question is: will it hold up in opposition against the figurative mark application?

Indeed, the European Intellectual Property Office (EUIPO) found McDonald’s slogan to have a low degree of distinctiveness, which is not a favorable outcome for the scope of trademark protection. However, distinctiveness is only one factor in determining whether there is a likelihood of confusion: the assessment also considers the similarity between the marks (which is high) and the overlap between the goods (which also exists).

Interestingly, the EUIPO noted that it is common practice in the relevant market for manufacturers to create variations of their trademarks, such as by altering fonts, colors, or adding verbal or figurative elements to indicate new product lines.

The Opposition Division of the EUIPO concluded that it is likely consumers would associate the ‘Lovin’ it’ sign with McDonald’s ‘I’M LOVIN’ IT’, assuming that the goods originate from the same or economically connected undertakings. Consumers would most likely perceive the contested mark as a sub-brand of the McDonald’s trademark.

In summary, there is a likelihood of confusion and the trademark application is rejected for all goods for which it was applied. While registering and protecting slogans is often challenging, McDonald’s was ultimately able to enforce its rights successfully. Good news for the trademark owner!

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.