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
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
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
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
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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On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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