The EUIPO has refused protection for the mark MAKING NEEDLES POINTLESS, finding it lacks distinctiveness and would be understood primarily as a promotional slogan, despite arguments around wordplay and dual meaning. The Board of Appeal confirmed that even where a phrase has multiple interpretations, the EUIPO will focus on the “first and most obvious meaning”, particularly if that meaning is descriptive of the goods or services. The decision reinforces the Office’s increasingly strict approach to English-language slogan marks and clarifies that even specialist audiences, such as medical professionals, will not be more tolerant of descriptive branding.
In a recent article for World Trademark Review, Pauline Piernez (Trade Mark and Design Associate with Marks & Clerk in Luxembourg) emphasised that marks with dual meanings face real challenges where one meaning is immediately perceived as descriptive, noting that even minimal distinctiveness may not suffice in practice given the EUIPO’s higher threshold. She explained that refusal is likely where the promotional message is understood “without further reflection,” and advised that brand owners should ensure a cognitive or interpretative step is required before reaching any descriptive meaning.