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

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.

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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...