Are slogans registrable as trade marks? Audi finally progress at the ECJ

The ECJ has annulled the decisions of the EU General Court and OHIM’s Board of Appeal which had refused the registration of the word mark VORSPRUNG DURCH TECHNIK in relation to a wide selection of goods and services. The General Court had considered that the mark had only acquired distinctive character in respect of motor vehicles and their components. However, the ECJ held that the General Court had been incorrect to apply a stricter set of criteria to advertising slogans than those applicable to other marks. The conclusion that mark was not “immediately distinctive” simply because the public would perceive the slogan to be a promotional formula and that its laudatory nature meant that it was a slogan that could be used by other companies.

The ECJ also gave guidance as to the registrability of slogans, noting that a slogan which possessed characteristics such as having a number of meanings, being a play on words or able to be perceived as imaginative, surprising and unexpected, would likely endow that slogan with distinctive character.

Background

In 2003, Audi AG applied to register the word mark VORSPRUNG DURCH TECHNIK as a CTM in respect of Classes 9, 12, 14, 16, 18, 25, 28, 35 to 43 and 45.

The examiner held that the mark was an objective message that was perceived as descriptive advertising by the relevant consumer, and accordingly the mark was devoid of any distinctive character. The exception was in Class 12, whereby the mark had acquired distinctive character in respect of motor vehicles and their components. OHIM’s Board of Appeal upheld his decision.

The General Court upheld the appeal board's decision, ruling that an advertising slogan was distinctive only if it could be immediately perceived as an indication of the commercial origin of the goods or services in question. It concluded that, while the mark VORSPRUNG DURCH TECHNIK could have a number of meanings, or constitute a play on words, or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered, this did not mean that it was distinctive; it did not contain anything likely to enable the relevant public to remember the expression easily and immediately as a distinctive mark for the relevant goods and services, over and above its obvious promotional meaning.

Audi appealed to the ECJ to set aside the judgment of the General Court and annul the contested decision.

ECJ decision

The ECJ annulled the decision of the General Court and OHIM’s appeal board.

The ECJ concurred with Audi’s argument that the General Court had applied too strict a test in assessing whether the mark applied for had acquired distinctive character by adding more stringent requirements on the grounds that the mark constituted an advertising slogan.

In particular, by requiring the sign to be perceived ‘immediately’ as an indication of the commercial origin of the goods or services which it covers, the General Court applied a test which went beyond the requirements laid down in Article 7(1)(b) of Regulation No 40/94 and those normally held necessary by the General Court in assessing whether a word mark has distinctive character.

The ECJ set out the settled case law principles:

• For a trade mark to possess distinctive character it must identify the goods in respect of which registration is applied for as originating from a particular undertaking and distinguish those goods from other undertakings;
• Distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public’s perception of the mark; and
• Marks that are also used as advertising slogans are not excluded from registration and it is inappropriate to apply stricter criteria to such slogans than to other types of signs. In particular, the slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required.

However, the ECJ noted that although the criteria is the same in relation to each type of mark, the relevant public’s perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories.

The ECJ held that the General Court had applied the above principles incorrectly. It did not substantiate its finding that the effect of the mark would not be perceived by the relevant public as an indication of the commercial origin of the goods and services in question, rather, it merely highlighted the fact that the mark consisted of an advertising slogan.

The ECJ also commented on the General Court’s analysis that the mark VORSPRUNG DURCH TECHNIK can have a number of meanings, can be a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered, suggesting that the presence of such characteristics was likely to endow that mark with distinctive character (which the General Court had failed to take into account).

Comment

It is worth noting that the ECJ substituted its own decision in place of that of OHIM’s Board of Appeal, with the result that the mark has now been registered in respect of all classes applied for.

Translated from German, VORSPRUNG DURCH TECHNIK means, “advancement through technology”. After 7 years of waiting, Audi finally has advancement in respect of the additional classes of goods and services and it appears that the correct decision was reached in the end, as there are no justifiable reasons why the criteria that are required to be satisfied in relation to advertising slogans should be any different than for other marks. Both the Board of Appeal and General Court seem to have confused the fact that the phrase was a slogan with an assessment of its inherent characteristics.

Although this case breaks no new ground, it serves as a reminder that advertising slogans can be registered as trademarks and that they should be treated the same way as any other type of trade mark - provided that they satisfy the normal criteria and meet the requirement of distinctiveness. Further, this case offers some helpful indications as to the sorts of characteristics that a slogan is expected to possess in order to satisfy the distinctiveness requirement.

For a copy of the judgment, please click here.