SLOGANS: Can They Be Registered As Trade Marks?

A trade mark is a trader's badge of quality for its product or service, and a registered trade mark is a powerful legal right for its owner, who can prevent similar marks being used for similar goods. In some circumstances, possession of a trade mark can stop the use of a similar mark on dissimilar goods if the mark has a special reputation.

Brand owners pay considerable amounts to advertising and marketing agencies to devise catchy slogans in order to promote and advertise their products and to leave their key brand message in the mind of the target audience. But to what extent can they protect their investments and register these valuable slogans as trade marks?

The European Court of Justice (ECJ) recently ruled on the registrability of slogans as trade marks in Office for Harmonisation in the Internal Market v Erpo Mˆbelwerk GmbH (Case C-64/02). The case is the latest in a line of recent cases that have dealt with the issue of slogans as trade marks and will hopefully further clarify to brand owners which slogan-type marks have a reasonable chance of successful registration as Community Trade Marks (CTMs).

Background

The German company, Erpo Mˆbelwerk GmbH (Erpo), applied to register the slogan 'daz Prinzip der Bequemlichkeit' ('the principle of comfort') as a CTM for various classes of goods, including in particular furniture. The Office for Harmonisation in the Internal Market (OHIM) Examiner rejected the application on the ground that the word combination (i) designated a characteristic of the goods concerned, and (ii) was devoid of any distinctive character. Erpo appealed against the decision.

The OHIM Third Board of Appeal annulled the Examiner's decision to the extent to which he had rejected the claim for products in Class 8 (tools (hand-operated); cutlery). For the rest, the Board of Appeal dismissed the appeal on the ground, in essence, that the phrase in question did not meet the requirements of Article 7(1)(b) and (c) and (2) of the Community Trademark Regulation (Regulation No 40/94), i.e. the mark applied for was:

devoid of any distinctive character, and

consisted exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service i.e. it was descriptive.

The European Court of First Instance (CFI) rejected the decision of...