A Turkish chef has successfully registered his signature salt sprinkle as an EU trade mark, but not in relation to food and drink services.
Nusret Gökçe owns Nusr-Et, a chain of steak houses. Opening in 2010 to critical acclaim, the chain quickly spread across Turkey and soon opened houses in the UAE, Qatar and the United States. Then, in early 2017, Gökçe went viral with this highly giffable salt sprinkle, from which he gained the nickname Salt Bae.
In March 2017, Salt Bae applied for the three second motion to be trade marked as a motion mark within the European Union. This application was made in relation to three types of goods and services: Class 25 (of the Nice Classification) includes clothing and like accessories. Class 30 includes coffee and chocolate based beverages, rice, noodles and pasta, bakery and sweet products, sauces, spices, chewing gums, ice, ice creams, cereal products, sugar and, of course, salt. Finally, Class 43 includes food and drink services, restaurants, cafés and bars, food service equipment and hotels.
According to the EU Trade Mark Regulation (EU) 2017/1001, the legal test for a trade mark is whether the sign has acquired distinctive character (Article 7(1)(b)). That is to say if ten normal people watched ten clips of chefs salting meet, including Salt Bae’s, they’d recognise his signature sprinkle and its commercial origin. It must also have acquired its distinctive character in all parts of the European Union (Article 7(2)), so that these ten people must represent the whole European Union or at least a substantial part of it. This point was discussed in the recent ‘KitKat decision’ on this site here.
The Examiner at the European Union Intellectual Property Office accepted the application for a trade mark in Classes 25 and 30 but found it lacked the minimum degree of distinctive character required for Class 43 (food and drink services). They decided that in the eyes of the relevant public, it’s “nothing more than a banal and ordinary scene of a chef preparing meat with a pinch of salt.” The relevant public being average consumers and professionals.
Salt Bae appealed to the EU’s Fifth Board of Appeal that the application be allowed for Class 43. He argued that the motion acquired distinctiveness, and continues to do so, through its Internet presence. He presented evidence of an Internet following and commentary to his videos on Instagram and YouTube.
The Fifth Board took issue with this evidence as it only showed the use of the sprinkle in Turkey, a non-EU state. Although there was press coverage in the United Kingdom and wide-spread social media attention, the Fifth Board noted that none of this attention related to the use of the signature within the EU and there was nothing conclusively linking social media users to the EU. They were not convinced that the sign had acquired distinctive character in all or a substantial part of the Union, as discussed in the KitKat decision.
Salt Bae’s social media evidence simply meant that he had a large following. The Fifth Board found “nothing fanciful, imaginative or striking in the motion mark that will create a link in the consumer’s mind between the sequence of the chef salting the piece of meat and the services applied for.”
The crux of the Fifth Board’s decision is that however distinctive a sign may be, if it does not take the consumer’s mind to the original product or service in which the applicant trades, a trade mark can not be registered. This is curious, given that more abstract motion marks have been granted. For instance, Microsoft’s two flared segments which join at the top as a geometric object moves up one and down the other. In the eyes of the Fifth Board, the image of Salt Bae preparing steak does less to bring the consumer’s mind to his steak house than this mark does to computer operating systems.
It is also worth noting that Salt Bae was successful in registering the trade mark for Classes 25 and 43 in the United States when an application made in January 2017 was granted in July 2018 (he did not apply for Class 30). This shows that despite the worldwide applicability of the Nice Classification, success depends in large part on the particulars of the jurisdiction, such as case law and the composition of the tribunal. However, it would appear that Salt Bae is not appealing the decision to the EU’s General Court, as more than two months have passed from the date of the Fifth Board’s decision with no mention of appeal.