In a recent decision of July 1, 2010 (file number I ZB 35/09) the German Federal Court of Justice confirmed a decision by the Federal Patent Court refusing registration for a wordy statement which in English would read as follows:
"The Vision: unique dedication for chocolate truffles.
The sense: everybody knows what needs to be done when and what does not need to be done.
The use: everybody does the right thing at the right time."
The applicant had filed this designation for registration as a German trademark for various kinds of foods in class 30 as well as for different services in classes 35 and 42. The Federal Court of Justice rejected the application for lack of distinctiveness and affirmed the decisions by the German Patent Court and the German Patent and Trademark Office. With this decision the Federal Court of Justice gives further guidance with respect to the protectability of trademarks concerning verbal statements not directly linked to a company or specific goods or services or their qualities.
While it is undisputed in German as well as in European Community trademark law that advertising slogans can be protected as trademarks the Federal Court of Justice found, in this case, that even in a case in which the statement or statements in question are not descriptive in any way for the goods or services in question and even if the term applied for is not a common word of the German or a commonly understood foreign language which will be perceived by consumers only as such and not as an element to distinguish goods or services of one company from those of another, there can nevertheless still be cases in which a lack of distinctiveness can be be found. This is the case, according to the Federal Court of Justice, in particular with respect to lengthy sequences of words which will usually not be perceived by consumers as an indication of origin of the goods or services in question. If the term in question is not concise, original and succinct, as in this case, the necessary minimum amount of distinctiveness may not be found. Furthermore, according to the court, consumers are not used to recognizing multiple successive statements as an indication of origin, i.e. a trademark.
Unlike other recent decisions this decision does not concern the question whether an advertising slogan is too short and too generic a statement in order to be protectable as a trademark. Rather, it concerns the other end of the spectrum in which an alleged advertising statement is too wordy to be perceived as an indication of origin. Trademark applicants need to take this into account and are well advised to make sure when filing applications for slogan marks that the slogan in question is concise and perceived as a slogan, and thus as an indication of origin, by relevant consumers.
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