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The registrability of slogans : VORSPRUNG DURCH TECHNIK
The European Court of Justice has delivered a new judgment on the registrability of slogans. Here is our summary:
The ECJ restates or clarifies its case law on the registrability of slogans in particular OHIM v Erpo Mobelwerk (DAS PRINZIP DER BEQUEMLICHKEIT). The General Court had misapplied that case law to the mark VORSPRUNG DURCH TECHNIK for various goods and services in a number of classes including 12. In essence the GC refused the mark because it was a laudatory or promotional statement which the public would not immediately recognize as indicating origin.
However the mere fact that the public perceive a sign as a promotional formula and that because of its laudatory nature it could in principle be used by other undertakings is not sufficient in itself to support the conclusion that the mark is devoid of any distinctive character. The laudatory connotation of a word mark does not mean that it cannot be perceived as an indication of origin. The fact that a mark is understood - perhaps even primarily understood - as a promotional formula has no bearing on its distinctive character.
Further the GC's reasoning was contradictory. The GC found that the slogan was imaginative, surprising and unexpected. Although such characteristics are not a necessary condition for establishing that a mark has distinctive character their presence is likely to endow a mark with distinctive character. All marks made up of signs which are also used as advertising slogans, indications of quality or incitements to purchase goods or services convey by definition an objective message.
However that does not mean that they are per se devoid of any distinctive character. Insofar as those signs are not descriptive under art. 7(1)(c) they can express an objective message even a simple one and still be capable of indicating commercial origin. That is the position in particular where the marks are not merely advertising messages but possess a certain originality or resonance requiring little in the way of interpretation by the relevant or setting off a cognitive process in the minds of the public.
The combination of the words VORSPRUNG DURCH TECHNIK (advance or advantage through technology) suggests a casual link with the goods and services and requires a measure of interpretation on the part of the public. Furthermore the slogan displays a certain resonance or originality which makes it easy to remember.
The decision not to register the mark under art. 7(1)(b) must be annulled.
Community trade mark: Audi AG v OHIM, Case C-398/08 P, ECJ, 21 January
2010 Web Link: http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en
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