UK: Are Slogans Registrable As Trade Marks? Audi Finally Progress At The ECJ

Last Updated: 24 February 2010
Article by Isabel Davies and Tom Scourfield

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.

To view the article in full, please see below:



Full Article

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 (http://tinyurl.com/yhhjhwe).

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 17/02/2010.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.