Dirty Dancing put in the corner by trade mark refusal

Despite the huge success of the theatre show DIRTY DANCING, the EUIPO has refused to register a trade mark application for the mark DIRTY DANCING on the grounds that the mark is descriptive and devoid of distinctive character.

Lions Gate Entertainment Inc. (Lions Gate) filed an application to register the word mark DIRTY DANCING at the EU Intellectual property office on 10 April 2015.  The application covered services in class 41 including entertainment and cultural services.

Lions Gate has successfully registered the stylised version of the mark DIRTY DANCING at the EUIPO, in a number of classes, including class 41. This application however was simply for the words without any stylisation.

In this case, the examiner held that the English-speaking consumer would understand the words dirty dancing as a generic expression for a specific manner of dancing, irrespective of whether or not such meaning might be linked to a movie.  The examiner argued that the mark has no element which could make the mark distinctive beyond its obvious descriptive meaning.

Lions Gate appealed the refusal and argued that the mark had acquired distinctiveness under the conditions set out under Article 7(3) CTMR. Lionsgate provided evidence of distinctiveness including printouts showing the box office sales and numerous press articles.

The decision of the Board of Appeal was to agree with the examiner's original decision. The Judge held that the applicant did not show evidence in relation to the services applied for in Class 41 at the filing date of the application. He said that even though Dirty Dancing was a worldwide famous film title, it did not mean that the trade mark had acquired distinctiveness. Rather than indicating commercial origin, the mark Dirty Dancing indicates its artistic origin.

The Judge considered that the marketing materials submitted in the evidence did not show that consumers would identify the theatre show as one produced by the applicant Lions Gate.

The EUIPO's practice has become stricter when assessing the distinctiveness of trade marks. This is demonstrated by the fact that other registries, including the UKIPO and USPTO, have accepted the registration of this mark.

This case demonstrates the high hurdle that could now be faced if a party seeks to argue before the EUIPO that what would otherwise be a descriptive term has acquired distinctiveness sufficient to allow it to be trade marked. If you have any concerns in this regard please do not hesitate to contact the team at McDaniel & Co on 0191 281 4000 or by email to legal@mcdanielslaw.com.