Austria: Laudatory Slogans Have A Future As Trademarks

Last Updated: 22 June 2016
Article by Hans Georg Zeiner

A frequently recurring problem in connection with CTMs is the issue of registrability of slogans or other laudatory advertising statements. In a recent decision the General Court added additional interesting criteria.[1]

Rexair LLC obtained the registration of the CTM No. 6668073 WET DUST CAN'T FLY in classes 3, 7 and 37. This trademark was not objected to by the examiner and a trademark certificate was issued. Subsequently, this trademark was contested by Pro-Aqua International GmbH by means of an application for a declaration of invalidity on the basis of Articles 7 (1) (b) and (c) of Regulation No. 207/2009 (CTMR). This application was rejected by the Cancellation Division of the OHIM and its decision was confirmed by the Second Board of Appeal of the OHIM. The General Court again confirmed this decision of the Second Board of Appeal with the cited judgement.

The first point the General Court had to deal with was the allegation of descriptiveness. It is interesting to note that all instances including the General Court denied any descriptive character of the trademark under the assumption that anybody who understands this phrase – consisting of general words of the English language – any sensible statement which could establish "a sufficiently direct and specific relationship between the sign and the goods and services in question"[2]. In the opinion of the Court this resulted from the fact that WET DUST does not exist, because once the dust is moistened and becomes wet, it is no longer dust. Moreover, the court held in connection with the goods of class 3 that the products covered by the trademark were not designed to moisten dust in order to prevent it from dispersing, but just to clean carpets, flooring, upholstery and thelike. The Court also did not accept the argument that vacuum cleaners in class 7 use or may use liquid components, because from a technical standpoint the liquids in the vacuum cleaner serve to filter the dust "but are not designed to dampen the dust in order to prevent it from flying"[3].

The arguments of the applicant relating to consumers who do not understand English were considered to be irrelevant, because the words of which the trademark consists are admittedly commonly used English words which will be understood even by consumer whose mother tongue is not English.

The court also rejected the third argument of the applicant that the registration of this trademark would make it impossible to explain the functionalities of their own cleaning machines. The court concluded that the expression of which the trademark consists "cannot be understood as a conventional way of describing the functionality of cleaning appliances and cleaning tools"[4] so that there is no need for competitors to use this expression.

The second plea of the applicant under Article 7 (1) (b) CTMR claiming lack of distinctive character was equally rejected. Based on prior judgements[5] the court confirmed that an advertising 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 distinctive character. Moreover, the court held that a trademark of laudatory nature and even if it is preliminarily understood by the public as a promotional formula, does not exclude that the mark can be perceived by the public as an indication of commercial origin. The trademark consisting of the words WET DUST CAN'T FLY will not enable the public to associate this expression without an interpretative effort with the goods and services in question.

Finally, the applicant had raised the point that the subject slogan would indicate that the performance of the products with the trademark would be better than the performance of other products. The court admitted that the contested trademark could be considered as slightly suggestive, but that no evidence was submitted to demonstrate the claimed assumption that the goods and services with the contested trademark would be superior.

In future cases it will be important to note the final conclusion of the court, that a laudatory connotation of a word mark will not make it inappropriate for the purpose of guaranteeing to consumers the origin of the goods and services which it covers[6].


[1] General Court of 22 January 2015, Case T-133/13

[2] General Court of 22 January 2015, Case T-133/13, paragraph 17

[3] General Court of 22 January 2015, Case T-133/13, paragraph 27

[4] General Court of 22 January 2015, Case T-133/13, paragraph 33

[5] AUDI vs. OHIM, Case C-398/08P; SMART TECHNOLOGIES vs. OHIM, Case C-311/11P and OETKER NAHRUNGSMITTEL vs. OHIM (La qualité est la meilleure des recettes), Case T-570/11

[6] General Court of 22 January 2015, Case T-133/13, paragraph 53

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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