Advertising Slogans in European Trade Mark Law: the importance of
the distinctiveness test in the case-law of the Court of Justice of the
European Union
Margarida de Almeida Viegas Borges Student number: 11835524 margaridaviegasborges@gmail.com
International and European Union Law: European Union Law Supervisor: dhr. mr. dr. Ronald Van Ooik
Date of submission: 13th of June, 2019 Word Count: 13 072
ABSTRACT
Whether or not a slogan is distinctive enough to be registered depends on various factors, most of them subjective. Although slogans do have a creative component to them that should indeed be analysed subjectively, they also represent fundamental business assets that should be dealt with in accordance with that status.
Therefore, as already indicated in the title, this thesis will focus on the more controversial topic of advertising slogans and how the Court of Justice of the European Union, as well as the European Union Intellectual Property Office in Alicante, have assessed the distinctiveness of this particular type of word mark.
In the end of this research paper it will be clear that a lot of the issues that could potentially be raised when assessing the registrability of slogans, could be solved or handled better if only there were a proper legal definition for the word “slogan” and also if the CJEU were more assertive in its case-law, when faced with the absence of specific legislation on the matter.
To this end, a theoretical framework of current EU Trade Mark Law will be initially introduced to allow for a better understanding of the importance slogans have in this field, followed by the analysis of four different cases of the CJEU that will hopefully prove the statement presented above.
TABLE OF CONTENTS
INTRODUCTION..……… 5
CHAPTER I ……… 7
1. General Remarks ……..………..……… 7
2. European Trade Mark Law……… 8
2.1 Protection of Trade Marks …….………..………. 9
2.2 Conditions for Registration at EU level ……….. 11
2.3 Unregistrable Marks - Refusal of Registration ……….……….. 13
2.3.1 Absolute Grounds ………..……….. 14
2.3.1 Relative Grounds ………….…………..……….. 17
2.4 Cancellation of Trade Marks………..………….……….. 18
2.4.1 Revocation ………….…………..……….……….. 18
2.4.2 Invalidity ……….…………..……….. 19
3. Conclusion ………..……… 20
CHAPTER II ……… 21
1. General Remarks Regarding Word Marks..………..……….……….…… 21
2. Slogans in European Trade Mark Law……….………..………..……… 22
2.1 Distinctive Character of Slogans …….………..……… 23
2.1.1 Examples of the newly found criteria for Assessing a Slogan’s Distinctiveness…. 24 a) Resonance ……… 24
b) Paradoxical Structure ………25
c) Lack of Meaning ……….. 26
2.1.2 Distinctiveness Acquired through Use ……… 26
3. CJEU and the EUIPO………..…….………..………..……… 27
3.1 The Court says YES to Distinctiveness …….………….……… 27
3.1.2 Audi v. OHIM ………..………..……… 29
3.2 The Court says NO to Distinctiveness …….………..…………..……… 31
3.2.1 “LIVE RICHLY” ……….….…………..……… 31
3.2.2 “Smart Technologies” ……….…….…………..……… 32
3.3 Other Practical Considerations …….……..…………..………..……… 33
4. Conclusion ……….….………..………..……….… 33
CONCLUSION ………..……… 35
INTRODUCTION
With the ever growing markets and businesses comes an equally growing need to be different and to stand out. Companies will thus create slogans in order to better advertise their products or services to their relevant public. These slogans will, hopefully, leave an impression on the consumer that, in turn, will associate them with a certain brand and positive/negative experience that will influence the re-purchase of said product or service.
The need for a truly harmonized and transparent European market has allowed for a certain level of evolution that has lead to intellectual property being arguably the most harmonized field in the EU’s internal market. For this reason, any differences in regulation must be addressed in order to maintain such degree of harmonization. Therefore, the problematic to be analysed further in this thesis concerns whether or not advertising slogans specifically fit in EU Trademark Law, and how have the Office in Alicante and the Court of Justice of the European Union (CJEU) dealt with this in the past.
Although it is not impossible, seeking trade mark protection for advertising slogans can be rather difficult. It is particularly so when the European Union Intellectual Property Office (EUIPO) seems to trade mark advertising slogans at a steady pace, while the CJEU seems to be stricter in its practice. This brings to light the difference between the registration practice of the Office and the existing jurisprudence of the Court, the former being considerably more liberal than the latter. Differences that lie on the most difficult requirement for a slogan to prove: its distinctiveness in relation to other marks.
One need only think of the hypothesis of the appropriation by a certain company of an advertising slogan as a trade mark. Through its registration, said company has now exclusive rights to, and ownership of, whatever sequence of words they choose as a slogan for the advertisement of their services or products. In this sense, the registration of a trade mark entails a definite tension between its exclusivity, availability and competitive impact.
Given that the definition of a trade mark is that of “a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises (…) protected by intellectual property rights” — this including words, letters, drawings or symbols — can we also add advertising slogans to this possibly limitless list? How can these be distinctive enough to be trade
marked? What criteria should be applied in order to determine this distinctiveness? How have the competent institutions addressed this issue? Has there ever been a proper definition for the word “slogan”?
These questions will be addressed by taking into account existing CJEU case law and the respective judgements, as well as referencing the EUIPO Guidelines on trade marks and the Regulation (EU) 2017/1001, 14 June 2017 of the EU trademark. This in relation with the criteria also provided by the Court regarding the finding of distinctiveness of a particular slogan (i.e. Is it particularly original? Does it constitute a play on words? Is it written with an unusual syntactic structure? Does it trigger a cognitive process in the minds of the relevant public?). All will be the focus of the two main chapters.
The first chapter will focus on a theoretical framework and an analysis of where we stand currently regarding European Trade Mark Law in general. It will consist of a broad overview of the EU rules on the topic and will include summaries of relevant case law pertaining to the matter.
The second chapter will primarily answer questions regarding the extent as to which advertising slogans can be protected, as well as their distinctive character and specifically how the CJEU has handled that assessment of the distinctiveness of these word marks. This will be supported through a presentation of four different cases where the CJEU has considered the distinctiveness of advertising slogans differently. These cases will be crucial since they are the foundation on which the final conclusions will be presented.
The conclusion will follow, along with an objective answer to the aforementioned research question. In it, we will strive to present a recommendation perhaps for a change in the legislation that would possibly provide for clearer procedures in the future. Not only a recommendation but also an explanation as to why it is needed.
Regarding the methodology, this thesis will follow the classic legal research method which entails descriptive research conducted from the internal perspective. It is a method which focuses primarily on describing and analyzing the current state of the law to those in legal professions, thus enhancing their ability to adjust their own actions accordingly.
CHAPTER I
Legal Framework of EU Trade Mark Law
1. General Considerations
Intellectual Property (IP) law can be described as a set of principles and rules governing the granting, enjoyment, transfer and the termination of private rights over certain intangible assets. It 1 provides creators with rights over their work. Rights that are relevant because they encourage innovation and social development, they allow exploitation for compensation, prevent unauthorised exploitation, and offer an existing or new business new market territory without competition (for so long as it retains its innovative edge).
The importance of protecting IP was first enshrined in the Paris Convention for the
Protection of Industrial Property, in 1883 (Paris Convention), and in the Berne Convention for the 2
Protection of Literary and Artistic Works, in 1886 (Berne Convention). Both treaties are 3 administered by the World Intellectual Property Organization (WIPO), a specialised agency of the United Nations created in 1967 "to encourage creative activity and to promote the protection of
intellectual property throughout the world". 4
An IP right derives from unique creations of the human intellect that result from human ingenuity, creativity and inventiveness.
One can usually refer to two autonomous branches in the area of IP law, namely copyright and industrial property. Copyright, also known as “author’s rights”, concerns original literary and artistic creations such as movies, books, paintings or electronic databases. It refers to certain specific rights that authors are entitled to over their creations. Industrial Property, which application is set out in the Paris Convention, on the other hand, protects patents for inventions, industrial 5 designs, commercial names and designations, geographical indications and trade marks. It also
Intangible property describes something which has no physical substance. It usually refers to creations which can be owned or
1
controlled by a private or individual person, who can transfer said ownership or control to another.
'Paris Convention For The Protection Of Industrial Property (As Amended On September 28, 1979) (Official
2
Translation)' (Wipolex.wipo.int, 1979) <https://wipolex.wipo.int/en/text/287556>
'Berne Convention For The Protection Of Literary And Artistic Works' (1971) <https://global.oup.com/booksites/content/
3
9780198259466/15550001>
Convention Establishing the World Intellectual Property Organization, signed in Stockholm on 14 July 1967. Preamble, second
4
paragraph
Paris Convention for the Protection of Industrial Property (as amended on September 28, 1979)
regulates the repression of unfair competition, aiming to combat the unauthorised use of such signs that could ultimately lead to misleading practices. 6
2. European Trade Mark Law
The main focus of this chapter will be on trade mark protection under IP law in the EU. Therefore, it is important to define, firstly, what a trade mark is. This definition is provided in Article 2 of Directive 2008/95/EC (“the Directive”), as well as in Articles 4 to 8 of the European 7 Union Trade Mark Regulation (“EUTMR”), which also establish and determine the means for 8 obtaining one. In 2017, as a result of the Regulation, the requirement for “graphical representation” was removed, meaning that marks can now have different formats. As such, any person or public law entity is eligible to register any sign for a trade mark, as long as it allows for the distinction of the goods or services of one undertaking to those of another.
However, trade marks are not just intended to serve as a distinguishing factor of the commercial origin of certain products or services. “Unlike inventions or original works, distinctive
signs are not considered to be achievements that are worthy of protection as such; the ground for protection rather lies in their capacity to convey information enabling consumers to make informed choices”. A trade mark, with the right impact, can become an important business asset. Be it by 9 association with a successful product or service, by heavy and continuous advertising, or simply due to the fashion industry. A good example of this would be the unquestionably powerful names of 10 “Levis” for jeans, “Mercedes” for cars, “Apple” for electronics. Other companies would not be able to use these marks without it risking confusing the consumers and possibly damaging the original brand’s reputation. The mark is, thus, much more than something that is meant to help its proprietors; a mark helps consumers identify the products they want to re-purchase, by simultaneously providing them with guarantees of quality and consistency.
There can be no question as to the commercial significance of trade marks in modern society. Brand names such as the ones mentioned above, are hugely valuable assets and as such,
World Intellectual Property Organization, Understanding Industrial Property <https://www.wipo.int/edocs/pubdocs/en/
6
wipo_pub_895_2016.pdf>
DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 22 October 2008 to approximate the
7
laws of the Member States relating to trade marks.
Regulation (EU) 2017/1001, 14 June 2017 of the EU trademark
8
Annette Kur and Thomas Dreier, European Intellectual Property Law: Text, Cases and Materials (Edward Elgar Publishing
9
Limited, 2013) p.157
Cornish, W., Llewelyn, D. and Aplin, T. (2013). Intellectual Property: Patents, copyrights, trademarks and allied rights. 8th ed.
10
vigorously protected. These marks are, in essence, pro-competitive because they allow the 11 distinction of goods on the market, allowing competition between companies. A mark therefore allows one to create goodwill in a brand, something that is intrinsic in the relationship with the consumer. The mark will operate within this relationship and reflect the interests of both sides — the producer and the consumer. One the one hand, it echoes the interests of the producer by being 12 a representation of their brand and the overall message they intend to pass on to the market. On the other hand, as previously mentioned, the mark allows consumers to identify the products they wish to re-purchase (or not), thus sending a message to the producers of what is successful within that market, allowing them to have an idea of what their target audience is after.
2.1 Protection of Trade Marks
“All the value of a brand — its philosophy, it’s values, its know-how, its staff, its products, its
intangible assets — is encapsulated in one symbol: its trade mark”. 13
Registration is crucial. Although it is true that it is not required to achieve some degree of protection many people, as well as undertakings, assume that they are protected just by using a certain mark in commerce, when the reality is that it is always more beneficial to register it, since by doing so, a greater level of protection will be granted to its owner. Trade mark registration also 14 dissuades others from using the same mark. It provides the owner with sole ownership; with an exclusive right to its use within the scope of economic and commercial activity.
Trade mark protection is territorial. This principle of territoriality implies that different owners of similar trade marks, each with exclusive rights to the mark in their own countries, can coexist in different territories, each with its own trade mark law. Therefore, domestic rights cannot be infringed by acts committed abroad, nor can domestic acts infringe foreign rights. 15
Pila J. and Torremans P., European Intellectual Property Law (OXFORD UNIV PRESS 2016), p.366
11
Ibid.
12
'Brands: How Branding And Trade Marks Fit Together' (Euipo.europa.eu, 2016) <https://euipo.europa.eu/ohimportal/en/brands>
13
accessed 3 May 2019.
Importance of Registration of Intellectual Property
<http://www.intellilocus.com/importance-of-registration-of-intellectual-14
property.html>
H. W. WERTHEIMER, 'THE PRINCIPLE OF TERRITORIALITY IN THE TRADEMARK LAW OF THE COMMON MARKET
15
COUNTRIES' (1967) 16 International and Comparative Law Quarterly <https://www.jstor.org/stable/757436? seq=1#metadata_info_tab_contents>.
However, a unitary Union right was first established successfully in the area of trade mark law. In order to prevent the fragmentation that would result from disparate national laws, harmonization, which proved fundamental for the proper functioning of the internal market, was 16 initially made possible through the Community Trade Mark Regulation (CTMR), enacted in 1994. 17 Having later on been altered from Community trade mark to EU Trade Mark (EUTM), it granted 18 applicants one sole title that would be valid in all Member States (MS). This meant that applicants were now able to register their marks only once, and have their rights protected within the entire European territory.
In most legal systems, rights are conferred either through formal registration (as determined by article 9 of the EUTMR) or because of the mark’s already established reputation in the market. 19 This earlier reputation requirement — according to articles 8(5) EUTMR and 4(4)(a) of the Directive — grants protection irrespective of the similarity of the goods or services or of a likelihood of confusion, provided it can be demonstrated that the use of the contested new mark (without due cause) would take unfair advantage of, or be damaging to, the distinctive character of the earlier mark. For example, in the Case “Intel” the proprietor of the famous brand of 20 microchips filed an application for invalidity of the word mark “INTELMARK” that was to be used for marketing services. In paragraph 30, the Court determined that “the types of injury referred to in Article 4(4)(a) of the Directive (…) are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public (…) establishes a link between them even though it does not confuse them”. The Court then found that “the fact that for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of such a link” between the two marks. 21
Annette Kur and Thomas Dreier, European Intellectual Property Law: Text, Cases and Materials (Edward Elgar Publishing
16
Limited, 2013) p.62
Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, [1994] OJ L 11/1, now enacted as Council
17
Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version), [2009] OJ L 78/1
By Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark.
18
OJ L 154, 16.6.2017. It changed the name of the Community Mark into the EU trade mark
Cornish, W., Llewelyn, D. and Aplin, T. (2013). Intellectual Property: Patents, copyrights, trademarks and allied rights. 8th ed.
19
London: Sweet & Maxwell Ltd, p.9.
Case C-252/07 Intel Corporation Inc. v CPM United Kingdom Ltd [2008] ECJ
20
Ibid., §63
The rationale that the function and value of a trade mark are not confined to its being an indicator of origin is, therefore, confirmed. 22
Throughout history, trade marks were essentially part of the private sector, being granted legal protection by use instead of through a formal grant by the state, which became unacceptable in a rapidly changing and industrializing society. It became clear that a more formal system was 23 needed to properly protect these rights. Thus, regarding the said formal registration procedure, there are four possible routes for registering trade marks: at a national level (via national European IP offices); at a regional level (for registration in Belgium, the Netherlands and/or Luxembourg) via the Benelux Office of Intellectual Property (BOIP); at EU level applications for a EUTM are made to the European Union Intellectual Property Office (EUIPO) in Alicante, Spain; and, lastly, at an international level (via WIPO).
National and regional trade marks are necessary for those who do not require or need protection at a EU level. While these systems are complementary to each other, EU trade marks provide protection in all MS of the Union. International registration is achieved through the 24 “Madrid System”, where one can file a single application and pay one set of fees to apply for protection in up to 120 countries. 25
2.2 Conditions for registration at EU level
As has been previously mentioned, the concept of “graphical representation” is no longer fundamental for the constitution of a trade mark. In recent years that issue has become the focus of attention when it comes to marks that cannot be represented graphically, such as olfactory, sound and colour marks. The inapplicability of this requirement, as from 1 October 2017, with the entry 26 into force of the EUTMR, means that signs can now be represented in any appropriate form as long as that representation is made clear, precise, easily accessible, intelligible and objective. The goal 27 was to increase legal certainty for users and reduce the objection rate for formality objections. 28
EUIPO, Guidelines for Examination in the Office, Part C, Opposition 2017.
22
Pila J. and Torremans P., European Intellectual Property Law (OXFORD UNIV PRESS 2016), p.364
23
'Where To Register' (Euipo.europa.eu, 2016) <https://euipo.europa.eu/ohimportal/en/trade-marks-in-the-european-union>
24
'WIPO | Madrid – The International Trademark System' (Wipo.int) <https://www.wipo.int/madrid/en/>
25
Ibid., p.368
26
'Graphical Representation - Types Of Mark' (Euipo.europa.eu, 2019)
<https://euipo.europa.eu/ohimportal/en/elimination-of-27
graphical-representation-requirement> Ibid.
The condition of distinctiveness, however, remains. It is so established in Article 7 EUTMR, which will be discussed in more detail later on. In order for a sign to be registered as a trade mark it has to be capable of distinguishing the goods or services from one undertaking, from those of other undertakings. It is to be tested through the experience of the relevant public which, as was held in 29 the “Eurohypo” Case, is to be understood as being “reasonably well informed and reasonably observant and circumspect”. Overall, this requirement exists to serve the main purpose of a trade 30 mark, which is to convey a message about the source, quality or responsibility for the goods or services that are labelled with a certain sign (with the relevant public perceiving it that same way). 31 As will be further explained later, for a mark to be distinctive it cannot be merely descriptive. A good example of this was the General Court’s (GC) judgement in the Case “WET
DUST CAN’T FLY”. In 2011, the company Pro-Aqua filed an application for the declaration of 32 partial invalidity of the above-mentioned trade mark. The application was based on Article 7(1)(b) and (c) of the now EUTMR. The GC upheld the decision of the EUIPO as to reject this application to have the mark WET DUST CAN’T FLY declared invalid due to its lack of distinctive character and overall descriptiveness in relation to certain cleaning products and appliances. The GC held 33 that the expression at hand did not describe the way in which the goods and services concerned operate. It held, furthermore, that the concept of “wet dust” is literally inaccurate since “dust is no 34 longer dust when it is wet”, making it a clearly distinctive expression. 35
In the Case “Doublemint”, we have an example of what was considered a descriptive 36 mark. An application was filed for registration of the word combination Doublemint for chewing gum. However, it was rejected by the EUIPO (decision which was later confirmed by the ECJ) on the basis of Article 7(1)(c), according to which a mark designating a characteristic of the goods or services it concerns, cannot be registered. From what was determined in paragraph 32 of that judgement, it is sufficient that such sign or indication could be used for the purpose of
Article 4(a) EUTMR
29
Case C-302/06 P Eurohypo v OHIM [2008] ECJ ECR I-3291, §68
30
Justine Pila and Paul Torremans, European Intellectual Property Law (OXFORD UNIV PRESS 2016), p.373
31
Case T-133/13 Pro-Aqua International GmbH v OHIM [2015] GC
32
'EU General Court Holds WET DUST CAN't FLY Trade Mark Valid' (Uk.practicallaw.thomsonreuters.com, 2015) <https://
33
uk.practicallaw.thomsonreuters.com/0-596-9848?transitionType=Default&contextData=%28sc.Default%29> Pro-Aqua International GmbH v OHIM §28
34
Pro-Aqua International GmbH v OHIM §55
35
Case C-191/01P EUIPO v Wm. Wrigley Jr. Company [2003] ECJ
characterizing the product to which it relates to. The words “double” and “mint” could easily be used to describe chewing gum.
2.3 Unregistrable Marks — Refusal of Registration
Trade mark law relies on the notion of “confusion” between marks for the purposes of denying registration and assessing infringement. In a situation where there is no risk of confusion 37 between two trade marks, then the signs can peacefully coexist on the market. However, the law does not recognise every possible mark or symbol as a valid trade mark. Only after satisfying a certain set criteria will the mark be able to be registered and even then, fulfilling the basic requirements for registration does not guarantee that a trade mark will be obtained. 38
The grounds upon which an application to register a trade mark may be refused, can be divided into two categories:
A. The absolute grounds (Article 7 EUTMR), which relate to inherent objections of distinctiveness — meaning marks that are, in general, purely descriptive, functional or that entail other public interest objections. A sign that is just the name or description of a
product is not a trade mark. The sign “Apple” for apples is descriptive and therefore non-distinctive. However, “Apple” for computers is not descriptive but rather distinctive for the goods it represents.
B. The relative grounds (Article 8 EUTMR), which arise because one other trader has an earlier conflicting right. “Relative” in the sense that the registrable mark is to be 39 considered in proportion to that conflicting right. The onus is on the owner of the previous right to be vigilant, and to determine when and whether it is necessary to oppose conflicting marks. Hence why signs which are found to be identical or similar to an already 40 established trade mark, thus confusing the average consumer, will not be protected based on these grounds.
Chris Dent, 'Confusion In A Legal Regime Built On Deception: The Case Of Trade Marks' (2015) 5 Queen Mary Journal of
37
Intellectual Property.
Justine Pila and Paul Torremans, European Intellectual Property Law (OXFORD UNIV PRESS 2016), p.374
38
Cornish, W., Llewelyn, D. and Aplin, T. (2013). Intellectual Property: Patents, copyrights, trademarks and allied rights. 8th ed.
39
London: Sweet & Maxwell Ltd, p.713.
EUIPO, Guidelines for Examination in the Office, Part C, Opposition, Section 0 2017, page 3
2.3.1 Absolute Grounds
Article 3 of the Directive and Article 7 EUTMR list the absolute grounds for refusing trade mark registration. In its first paragraph are included, in a nutshell, marks that are devoid of distinctive character (making them merely descriptive), marks that are purely functional or offensive, and marks which must be denied registration based on international or Union legislation or agreements to which the EU and its MS are parties to.
Article 7 EUTMR adds in paragraph 2, that registration will be refused even when the ground on which it is based applies only to part of the EU territory. Furthermore, it is important to point out that, as the Court stated in the Case “Linde AG”, each of the grounds is independent and should be analysed separately. In paragraph 68 of that case, the Court went on to explain that if a 41 mark is not refused registration under one provision of that article, it may still be under another.
Article 7(3) EUTMR provides an exception to its first paragraph. It stipulates that:
Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested as a consequence of the use which has been made of it.
It introduces the concept of acquired distinctiveness through use. The applicant has the right to claim that their mark has acquired the said distinctiveness, as well as to present relevant proof thereof. This concept means that a significant proportion of the relevant public identifies the 42 goods and products promoted under a specific mark, as originating from a certain undertaking, 43 making it possible to circumvent the absolute grounds for refusal of trade marks. In Case “Nestlé v.
Mars”, Mars objected to the registration of the slogan “Have a break” since it had only been used 44
as part of the combination “Have a break, have a Kit Kat” by Nestlé. The Court held, in paragraph 30 of the judgement, that acquired distinctiveness may be a result of both the use of a component of a registered trade mark and of the use of a separate mark in conjunction with one. It continued saying that, in both cases, it is sufficient that the relevant class of persons associates the product or
Case C-53/01 Linde AG [2003] ECJ §67
41
EUIPO, Guidelines for Examination in the Office, Part B, Examination, Chapter 1 2017
42
Ibid., Chapter 14, page 3
43
Case C-353/03 Société de produits Nestlé SA v Mars UK Ltd. [2005] ECJ
service with the undertaking. Nestlé won what was considered a landmark decision which confirmed that what matters most is whether the mark is distinctive, rather than how it became so. 45 The Court went further in “Windsurfing Chiemsee”. Windsurfing Chiemsee is a company 46 based near the shores of the Chiemsee (the largest lake in Bavaria). It sells sports goods which bear the designation “Chiemsee”. It has even registered that designation in Germany with additional features or words, such as “Chiemsee Jeans”. According to the German registration authorities however, there is no protected trade mark with that single word, so they have regarded it as a mere indication of origin making it incapable of being registered as a trade mark. Huber has been likewise selling sports clothing in a town near that lake. The items bear the designation “Chiemsee” but in a different graphic form and for different products than those produced by the first company.
Windsurfing Chiemsee claims that, despite those differences, there is still a likelihood of confusion
between the two marks. Huber, on the other hand, contends that the word in question is an indication of origin and must remain available, which by those standards means that it is not capable of creating confusion. 47
The Court went on to list other elements that were to be taken into account when accessing a mark’s acquired distinctiveness through use: “the market share held by the mark”; “how intensive and geographically widespread the mark has been”; “the amount invested by the undertaking in promoting it”; and “statements from chambers of commerce and industry or other trade and professional associations”. Ultimately, the Court did not accept any of the arguments presented 48 and instead held that geographically descriptive marks are not unregistrable, depending on the recognition of the use which is made of it. 49
However, in “Procter & Gamble” these standards were actually lowered by the Court since there was no need for the requirement of “consumer perception” to be fulfilled, the unusual juxtaposition of the words “BABY-DRY” was enough to prove the distinctiveness of the mark. 50
Still in accordance with Article 7 EUTMR (and with the equivalent Article 3 of the Directive), trade marks may also be denied registration if they entail certain public interest objections. Therefore, a mark will not be registered if it is contrary to public policy or to accepted
'Société Des Produits Nestlé SA V Mars UK Ltd - 5RB' (5RB)
<https://www.5rb.com/case/societe-des-produits-nestle-sa-v-mars-45
uk-ltd/>
Case C-108/97 Windsurfing Chiemsee [1999] ECJ §51
46 Ibid., §9 to §15 47 Ibid., §51 48 Ibid., §47 49
Case C-383/99 P Procter & Gamble Co. v OHIM [2001] ECJ §43
principles of morality (Art. 7(1)(f)), if its nature is intended to deceive the public (Art. 7(1)(g)), or if its use is prohibited by EU law.
In Case “Couture Tech Ltd v OHIM”, a company with connections to a Russian designer, 51 submitted an application for registration of a figurative mark. It was rejected on the grounds that it consisted of an exact replica of the coat of arms of the former USSR. The GC decided to uphold 52 this decision of the Office, since according to Hungarian legislation that mark was considered to be a “symbol of despotism” which use is contrary to public policy. In these cases, the relevant public 53 whose perception is to be taken into account is the general public, which is not limited to those to whom the goods or services in question are addressed to. It is so because, as was established in Case
“PAKI Logistics v OHIM”, the signs that fall under this ground for refusal must be deemed
shocking to every other person who will be confronted with them in their every day life. In this 54 Case, a reputable German logistics company called PAKI owned a mark based on an allusion to the German word for “packaging”. Their application for registration was denied on the grounds that “Paki” would be perceived as “racist, derogatory and insulting” in the UK and thus, contrary to public policy and morality. 55
In Case “Emanuel” on the other hand, the CJEU was given an opportunity to elaborate on 56 Article 7(1)(g) EUTMR, on public deceit. The case concerned a well-known wedding designer who had registered the mark “Elizabeth Emanuel”, her own name, for her company. Later, she decided to assign her business and trade to another company, which changed its name to "Elizabeth Emanuel International”. Not long after, Ms. Emanuel left the business. The company, to whom the designer no longer had any ties to, applied for registration of the mark “ELIZABETH EMANUEL”. Ms. Emanuel opposed this application since this new mark was likely to deceive the public into thinking that she would still be affiliated with the company. This deception would make consumers believe that they were buying her designs when, in reality, she was no longer involved in their production. Ultimately, the Court decided against Ms. Emanuel since she had already assigned everything
Case T-232/10 Couture Tech Ltd v OHIM [2011] GC
51
Ibid., §6
52
Ibid., §59
53
Case T-526/09 PAKI Logistics v OHIM [2011] GC §18
54
Great Britain: Law Commission - Patents, Trade Marks And Design Rights (TSO 2013).
55
Case C-259/04 Elizabeth Florence Emanuel v Continental Shelf 128 Ltd. [2006] ECJ
related to her business, trade mark included, to the new company. Nevertheless, in paragraph 47 of 57 the judgement, it was emphasized that the circumstances for refusing registration on the grounds of possible public deceit, “presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived”. It was for the national court to decide whether there was an 58 intention on the part of the undertaking to deceive the consumers in the first place. 59
2.3.2 Relative Grounds
Article 4 of the Directive and Article 8 EUTMR, list the relative grounds for refusing registration of trade marks. The relative grounds, in comparison to the absolute ones, arise when a new mark is similar or identical to a previously existing one.
Firstly, according to Article 8(1) of the Regulation (parallel provision to Article 4(1) of the Directive), the trade mark applied for will not be registered if it is identical with an earlier trade mark and the goods or services it concerns are identical to the ones for which the earlier trade mark is protected; or, secondly, if because of the similarity between both trade marks there exists a likelihood of confusion and association on the part of the public.
The GC elaborated on the concept of an “earlier mark” in Case “CITIGATE”. In paragraph 60 93, it provided a number of conditions for its broader protection, namely: “the earlier trade mark which is claimed to have a reputation must be registered”; “that mark and the mark applied for must be identical or similar”; “it must have a repute in the European Union, in the case of an earlier Community trade mark, or in the Member State concerned, in the case of an earlier national trade mark”; “the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark”. In this case the CITIBANK trade mark was considered to have a certain reputation that the newer CITIGATE mark was taking advantage of. 61
From all the aforementioned one can conclude that problems can arise even if the marks or the goods or services merely look alike. This confusion is capable of hindering the relationship
Justine Pila and Paul Torremans, European Intellectual Property Law (OXFORD UNIV PRESS 2016), p.390
57
Case C-259/04 Elizabeth Florence Emanuel v Continental Shelf 128 Ltd. [2006] ECJ §47
58
Ibid., §50
59
Case T-301/09 IG Communications/OHMI - Citigroup e Citibank (CITIGATE) [2012] GC
60
Ibid., §122
between the proprietor of the trade mark (the rights holder) and the consumer, stopping the mark from fulfilling its pro-competitive role. 62
2.4 Cancellation of Trade Marks
A European trade mark registration lasts for ten years with the possibility of being renewed indefinitely (as per Article 52 EUTMR). However, under the umbrella term “cancellation proceedings”, Article 63(1) EUTMR provides for two types of procedures to be used when the trade marks are not being used appropriately or when they no longer serve their purpose: applications for revocation and for declarations of invalidity.
2.4.1 Revocation
Trade marks are tools that serve a commercial purpose, they serve to distinguish goods or services of one undertaking from those of many other undertakings on the market. If the trade mark is not being used and thus, not serving that purpose, then there is a problem for which revocation is usually the sanction for. Pursuant to Article 58(1) EUTMR, there are three grounds for revocation: there has been no genuine use of the trade mark during a continuous period of 5 years; it has become generic; it has become misleading.
1. By genuine use, it is meant actual use either by the proprietor or by a third-party with the consent of the proprietor. It is for the proprietor to prove that there has been use of the trade mark 63 in its relevant market. In the absence of proof of genuine use, one can only avoid revocation by 64 giving a valid and independent reason for the non-use. 65
2. Generic use implies that the mark has become the commonly used name for a good or service, such as “aspirin”, “escalator” or “thermos”. What is important is that the term is actually used in trade to refer to certain good or services, it is not necessary to prove that it directly describes a characteristic or quality of such goods or services. 66
3. When a trade mark is understood as being misleading to the consumer, as to the nature, quality or geographical origin of the good or services for which it is registered, it can be revoked. 67
Justine Pila and Paul Torremans, European Intellectual Property Law (OXFORD UNIV PRESS 2016), p.397
62
Article 8 of the Directive and Article 25 EUTMR allow and regulate the licensing of trade marks.
63
Article 19(1) European Union Trade Mark Delegated Regulation (EU) 2018/625
64
Article 47(2) EUTMR
65
EUIPO, Guidelines for Examination in the Office, Part D, Cancellation, Section 2 2017, Page 9
66
Ibid.
“Misleading use is the most obvious ground for revocation (…) if the intention was present at the time of registration, such a mark would never be allowed in the first place”. Let us imagine that 68 Person A is looking into buying a watch. He finds one that is marketed as having been fabricated in a Swiss city. It is safe to assume that this particular watch would interest him due to its geographical origin, and the fact that it is common knowledge that Swiss watches are of higher quality. If that watch is marketed as being from Switzerland, but it was actually fabricated somewhere else, it will be misleading the consumer. The producer is aware that by trade marking a product like this, and therefore advertising it as being Swiss, he will be guaranteeing that more people will be drawn to it. Trade marks used in cases like this can be revoked under Article 58(1) EUTMR.
2.4.2 Invalidity
In what concerns the invalidity of trade marks, the grounds for claiming it are the same as the ones mentioned above for refusal of registration, so “any mark gained in contradiction of those provisions is an invalid mark”. In cases where the absolute ground being infringed is any one of 69 the ones mentioned in Article 7(1)(b), (c) or (d) (non-distinctiveness, descriptiveness or genericism) there will be an exception. According to Article 59(2) EUTMR, the trade mark may not be considered invalid if it has acquired distinctive character through its use. Since it is an exception, the onus falls on the party seeking to rely on it. consequently, if the party cannot prove the acquisition of distinctiveness through use, the mark must be declared invalid. 70
Invalidity can also be linked to bad faith. In Case Chocoladenfabriken Lindt & Sprüngli, 71 the Court had a chance to analyse the criteria relevant to determine that aspect of invalidity. In 2000, the Swiss company Lindt applied for registration of a Community trade mark for a sitting gold-coloured chocolate bunny. The problem was that the Austrian company Franz Hauswirth was already marketing a similar chocolate bunny, which might have been confusing to consumers. The latter claims the former was acting in bad faith when it applied for registration. In the end, the CJEU established, in paragraph 53 of the judgment, that in order to determine whether the applicant is acting in bad faith, the national court must take into account certain factors: “the fact that the
Justine Pila and Paul Torremans, European Intellectual Property Law (OXFORD UNIV PRESS 2016), p.431
68
Ibid., p.432
69
In Joined Cases C-217/13 and C-218/13 Oberbank AG, Banco Santander SA, Santander Consumer Bank AG v Deutscher
70
Sparkassen- und Giroverband eV [2014] §68 to §71
Case C-529/07 Chocoladenfabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH [2009] ECJ
applicant knows or must know that a third party is using an identical sign for a similar product capable of being confused with the sign for which registration is sought”; “the applicant’s intention to prevent that third party from continuing to use such a sign”; and, “the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought”. This ruling represents a “broad and flexible” approach which requires the national courts to take into consideration all relevant factors at the time of the application for registration of a mark. 72
3. Conclusion
In this first chapter we have looked into some of the fundamentals of EU trade mark law theory, along with some important case law of the CJEU (to better exemplify it). In the next chapter, we will elaborate further on the topic of advertising slogans and how they fit in EU trade mark law, namely, in all that has been developed thus far. We will touch on the protection of slogans, their distinctive character (and how it can be acquired through use), as well as how the jurisprudence of the CJEU has played an essential role in the development of this more controversial area of trade mark law.
Patricia Jones, 'Bad-Faith Bunnies: Case C-529/07 Chocoladefabriken Lindt & Sprüngli AG V Franz Hauswirth Gmbh (11 June
72
CHAPTER II
Advertising Slogans in Particular
1. General Remarks Regarding Word Marks
Article 4 of the EUTMR clearly states:
“An EU trade mark may consist of any signs, in particular words, including personal names,
or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of (…) distinguishing the goods or services of one undertaking from those of other undertakings”.
It should be read in conjunction with Article 3(2) EUTMIR, which establishes that the 73 “representation of the trade mark shall define the subject matter of the registration”.
It is, thus, understood that it is necessary to specify what type of sign is going to be used in trade. However, whichever one is chosen, its distinctiveness will always have to be proven. It is true that this is easier to prove in regards to some types of marks over others. The distinctive character of a figurative mark like a logo for example, will always be easier to determine than those marks solely made up of words. People are far more likely to recognise an image than a sentence or a specific word. The easier a mark is to recognise implies that the easier it will be to then associate it as being from a certain undertaking. In this chapter, as can be perceived from the title, the main focus will be on these word marks or, more specifically, slogans (a somewhat non-traditional word mark).
One can describe word marks as signs consisting exclusively of printable characters, such as letters, numbers or numerals, and for which no colour is needed. We are talking, for example, 74 about single words like “Microsoft”, letter combinations such as “BBC”, number combinations as in “501” (for Levi’s jeans), or, finally, slogans like “Red Bull gives you wings”. On the one hand, the benefits of using a word mark in trade are primarily its simplicity and how easy they are to understand from the point of view of the general public, leading to a stronger market position. On 75
European Union Trade Mark Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for
73
implementing certain provisions of Regulation (EU) 2017/1001
'Trade Mark Types' (ige.ch, 2019)
<https://www.ige.ch/en/protecting-your-ip/trade-marks/before-you-apply/your-ip-protection-74
strategy/trade-mark-types.html>
Intellect Juris, 'Word Marks Vs. Logo Marks: Which Is More Preferable?' (Intellectjuris.com, 2018) <https://
75
the other hand, the main difficulty is the fact that it is easy to choose a word mark that already exists or that is extremely similar to others in the market. 76
2. Slogans in EU Trade Mark Law
The Oxford Dictionary of English defines the word slogan as “a short and striking or memorable phrase used in advertising”. So while trade marks in general are specifically intended 77 to designate the origin of the product or service they are related to, slogans serve a more promotional function since they are used mainly in advertising as a way to entice consumers into purchasing a certain product. They do not title a good or service directly but support it commercially by enabling the public to link a product to a certain undertaking. 78
More often than not, slogans run the risk of being merely descriptive, “simple, banal and directly accessible”. It means that that particular combination of words is too common and strictly 79 promotional and, therefore, not distinctive enough to be registered. Promotional slogans can still be registered though, as long as they are easily distinguishable and can be proven to serve equally as indicators of commercial origin, allowing consumers to then identify the products’ sources. The 80 CJEU has, therefore, determined that the registration of marks used as advertising slogans is not excluded by virtue of such use.
Slogans are also the first line of communication with the consumer. By representing a 81 significant investment from companies to draw consumers to what they are selling, slogans form a very specific (informal) category of signs. 82
Ibid.
76
Stevenson, A. (2010). Oxford Dictionary of English (Vol. III). Oxford University Press.
77
Marcus Höpperger, 'Slogans As Trademarks – European And French Practice' (Wipo.int, 2010) <https://www.wipo.int/
78
wipo_magazine/en/2010/02/article_0007.html>
In Case T-281/02 Norma Lebensmittelfilialbetrieb v OHMI [2004] GC §22, the EUIPO considered the mark “MORE FOR YOUR
79
MONEY” as being so.
"Protecting slogans as trademarks: how and why” (Novagraaf.com 2018)
<https://www.novagraaf.com/en/insights/protecting-80
slogans-trademarks-how-and-why>
Marcus Höpperger, 'Slogans As Trademarks – European And French Practice' (Wipo.int, 2010) <https://www.wipo.int/
81
wipo_magazine/en/2010/02/article_0007.html>
Ibid.
2.1 Distinctive Character of Slogans
Although difficult, trade mark protection for slogans is possible. As has been mentioned 83
supra in the Introduction, registration is key and business-owners have all the reasons to seek trade
mark protection for their slogans. They are generally used alongside the company’s name and help build the identity of the brand, and yet slogans as such are rarely considered distinctive enough to be registered as trade marks. 84
One of the most commonly used grounds for refusal of registration of a particular mark is its lack of distinctive character, as established in Article 7(1)(b) EUTMR and Article 3 of the Directive. In both Case “Rewe-Zentral” and Case “BEST BUY”, the General Court explained that signs which lack distinctiveness are “those which do not enable the relevant public to repeat the experience of a
purchase if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services in question”, which is “true, in particular, for signs
which are commonly used in the marketing of the goods or services concerned”. 85
On the contrary, it is settled case-law that trade marks that possess distinctive character for the purposes of those same provisions, “must serve to identify the goods in respect of which
registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings”. It has been equally established that, “that 86
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”. 87
Particularly regarding the assessment of the distinctive character of slogans, it is settled case-law as well, that it is inappropriate to apply to slogans stricter criteria than those applicable to other types of marks. However, the Court has also held that within that criteria, the “public’s 88 perception” element, may differ and therefore be more difficult to establish for slogans. Indeed, in
As Nike’s ‘JUST DO IT’ and McDonald’s ‘I’M LOVIN’ IT’ trademarks show;
<https://www.novagraaf.com/en/insights/protecting-83
slogans-trademarks-how-and-why> Ibid.
84
Case T-79/00 REWE-Zentral v OHIM (LITE) [2002] GC §26 and Case T-122/01 Best Buy Concepts v OHIM (BEST BUY) [2003]
85
GC §20
Case C-398/08 P Audi v OHIM [2010] ECJ §33; Case C-383/99 P Procter & Gamble v OHIM [2001] ECJ §32; Case C-64/02 P
86
OHIM v Erpo Möbelwerk [2004] ECJ §42; Case C-302/06 P Eurohypo v OHIM [2008] ECJ §66
Case C-398/08 P Audi v OHIM [2010] ECJ §34; Case C-383/99 P Procter & Gamble v OHIM [2001] ECJ §33; Case C-302/06 P
87
Eurohypo v OHIM [2008] ECJ §67
Case C-398/08 P Audi v OHIM [2010] ECJ §36; Case C-64/02 P OHIM v Erpo Möbelwerk [2004] ECJ §32 and §44
this case, the authorities may take into account the fact that the average consumers usually do not make assumptions regarding the origin of products on the basis of the respective advertising slogan, since a word mark consists of a sign which is independent from the appearance of the product it relates to. Despite this difficulty, it cannot and does not serve as a legitimate justification to lay 89 down different specific criteria just for word marks or advertising slogans. In this sense, the Court has held that an advertising 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 a particular level of distinctiveness to not be denied registration under Article 7(1)(b) EUTMR. 90
Furthermore, the fact that a mark is perceived as a promotional formula by the relevant public and that, due to its laudatory or commendatory nature, it could in principle be used by other undertakings, is not a strong enough argument to support the conclusion that the mark in question is devoid of distinctive character. Such a mark can be perceived by this relevant public as being both 91 a promotional formula and a sign capable of informing the consumer of the commercial origin of goods or services, without it affecting the mark’s distinctiveness. One does not automatically 92 exclude the other. 93
These are the considerations that have to be taken into account when assessing a mark’s distinctive character, or lack thereof, as per the cited case-law.
2.1.1 Examples on the Newly Found Criteria for Assessing a Slogan’s Distinctiveness a) Resonance
The Court has referred to the promotional message of slogans, or rather their resonance with the public, in several cases.
In “Audi”, for a long time considered the leading case in slogans, the Court said that the mark “Vorsprung Durch Technik” (advance through technology) had a certain originality and resonance which made it easily memorable, therefore making it distinctive enough to be registered. This contrary to what the GC had considered initially: that the public would perceive 94
Case C-64/02 P OHIM v Erpo Möbelwerk [2004] ECJ §35; Case C-383/99 P Procter & Gamble Co. v OHIM [2001] ECJ §36
89
Case C-398/08 P Audi v OHIM [2010] ECJ §39; Case C-64/02 P OHIM v Erpo Möbelwerk [2004] ECJ §31 and §32
90
Case T-59/14 Blackrock v OHIM (INVESTING FOR A NEW WORLD) [2015] GC §23
91
Ibid., §24
92
Case T-570/11 Oetker Nahrungsmittel v OHIM (La qualité est la meilleure des recettes) [2014] GC §27
93
Case C-398/08 P Audi v OHIM [2010] ECJ §59
the slogan in question as containing an “objective laudatory message” and, therefore, not registrable. The main issue with laudatory terms being that these can be generally weak, merely 95 descriptive or false advertising. 96
The Case "Qualité Est La Meilleure des Recettes” (quality is the best recipe) was thought 97 as the turning point where many believed that slogan registration would be made easy. In this case the Court went back on its previous ruling in “Audi” against all expectations, and stated that that mark was nothing more than a mere promotional or marketing incentive and that it lacked resonance. It presented no play on words, or anything paradoxical. People would not be forced to reflect on the slogan, nor would it make people think twice about it, therefore being rejected.
Around the same time however, the EUIPO accepted the mark “WHEN PASSION MEETS
INNOVATION”, for machines and laser writers, since it required reflection and interpretation for 98 99 it to be understood.
b) Paradoxical Structure
Regarding a slogan’s paradoxical structure, the EUIPO has registered marks such as “As
Green As White Can Be” for chemical products. The Office referred to a paradox: it might be that 100
these goods are helping to clean a product, but what does the “Green” mean? It is meant to allude to sustainability and to let the consumer know that that particular product is possibly more environmentally friendly than others on the market.
The mark “Impossible Becomes Possible” , for energy drinks, was considered a paradox as 101 well since something that is impossible could never be possible. It was an abstract message which certainly required a degree of interpretation. Therefore, it was considered distinctive and registrable.
Ibid., §13
95
Jennifer Collins, 'Laudatory Terms – Super Trademarks Or Not Worth The Trouble?' (TheTMCA.com, 2018) <https://thetmca.com/
96
__trashed-2/>
Case T-570/11 Oetker Nahrungsmittel v OHIM (La qualité est la meilleure des recettes) [2014] GC
97
(Euipo.europa.eu) <https://euipo.europa.eu/eSearch/#advanced/trademarks/1/100/
98
n1=MarkVerbalElementText&v1=WHEN%20PASSION%20MEETS%20INNOVATION&o1=AND&c1=CONTAINS&sf=Applicati onNumber&so=asc>
as per the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration
99
of Marks of 15 July 1957. Established by the Nice Agreement, it is an international classification system of goods and services. <https://www.wipo.int/classifications/nice/en/index.html> (Euipo.europa.eu) <https://euipo.europa.eu/eSearch/#advanced/trademarks/1/100/ 100 n1=MarkVerbalElementText&v1=As%20Green%20As%20White%20Can%20Be&o1=AND&c1=CONTAINS&sf=ApplicationNum ber&so=asc> (Euipo.europa.eu) <https://euipo.europa.eu/eSearch/#advanced/trademarks/1/100/ 101 n1=MarkVerbalElementText&v1=Impossible%20Becomes%20Possible&o1=AND&c1=CONTAINS&sf=ApplicationNumber&so=a sc>
c) Lack of Meaning
The Office accepted registration for the mark “Simple Outside Clever Inside” for medical 102 products. Can these products be clever? Can they be smart? They are not capable of such, therefore it constitutes a distinctive play on words.
Regarding the mark “EURORealTime” , the Office equally understood that these particular 103 words do not have meaning when placed together making it distinctive enough to also be registered.
2.1.2 Distinctiveness Acquired Through Use
As has been established in the previous Chapter, the distinctive character of a mark acquired through the use which has been made of it, implies that at least a considerable proportion of the relevant public has come to see that mark as identifying the goods and services claimed by it as originating from a particular undertaking. Thus, allowing it to circumvent the absolute grounds 104 for refusal of trade marks, enshrined in article 7 EUTMR.
In the Case “Combinaison des couleurs rouge, noire et grise pour un tracteur” 105 (combination of red, black and gray colours for a tractor), the Court elaborated on this concept of a mark’s distinctiveness, since the applicant himself was accused of not having proved his figurative mark’s acquired distinctiveness in a substantial part of the EU. In paragraph 33 the Court stated 106 that the distinctive character of a sign must be assessed in relation to the goods or services it pertains to and, secondly, to the presumed perception of the average consumer (those who are considered reasonably well informed and reasonably observant and circumspect) of the products in that specific category.
The relevant public as defined by the Court in that judgement, is “linked to an examination
of the intended purchasers of the goods concerned, because it is in relation to those purchasers that the mark must perform its essential function”. 107
(Euipo.europa.eu) <https://euipo.europa.eu/eSearch/#advanced/trademarks/1/100/ 102 n1=MarkVerbalElementText&v1=SIMPLE%20OUTSIDE%20%20%20CLEVER%20INSIDE&o1=AND&c1=CONTAINS&sf=App licationNumber&so=asc> (Euipo.europa.eu) <https://euipo.europa.eu/eSearch/#advanced/trademarks/1/100/ 103 n1=MarkVerbalElementText&v1=EURORealTime&o1=AND&c1=CONTAINS&sf=ApplicationNumber&so=asc> EUIPO, Guidelines for Examination in the Office, Part B, Examination, Chapter 14 2017, page 3
104
Case T-378/07 CNH Global / OHMI (Combinaison des couleurs rouge, noire et grise pour un tracteur) [2010] GC
105
Ibid., §5
106
Ibid., §38
Since, as stated previously, one cannot apply to advertising slogans stricter criteria than those applicable to other types of marks, the conditions for proof of acquired distinctiveness through use for those marks (mentioned in Chapter I) has to apply equally to slogans.
As a consequence, a trade mark registered under the terms of Article 7(3) EUTMR enjoys the same protection as any other trade mark that was found registrable from the moment of its first examination. 108
3. The Court of Justice of the European Union (CJEU) and the European Union Intellectual Property Office (EUIPO)
The purpose of this thesis is to make a statement regarding the current assessment of advertising slogans’ distinctive character by the EUIPO, the General Court (GC) and the European Court of Justice (ECJ). Through case-law it will be shown how these different authorities assess the distinctive character of slogans, as well as explain why ultimately slogans should not be so difficult to register. We intend to prove that in practice, despite all the already presented theory, slogans are assessed differently every time.
We will now proceed to the presentation of some cases where these differences were evident.
3.1. The CJEU says YES to distinctiveness
3.1.1. “DAS PRINZIP DER BEQUEMLICHKEIT” 109
Erpo, a German company applied for registration of the slogan “DAS PRINZIP DER BEQUEMLICHKEIT” (the principle of comfort) as a EUTM. The Office rejected it on the grounds
of it being merely promotional and so, devoid of any distinctive character. The Board of Appeal went further when claiming that the mark lacked imagination and originality. The General Court later rejected this condition of originality, claiming that in doing so the Board of Appeal was applying stricter criteria to this mark than those that were applicable to other marks. The GC likewise decided to reject the application of the mark unless the applicant was able to prove that that expression was common in business communications and advertising. Since it was not the case, the GC dismissed the case and it went up to the ECJ.
EUIPO, Guidelines for Examination in the Office, Part B, Examination, Chapter 14 2017, page 16
108
Case C-64/02 P OHIM v Erpo Möbelwerk [2004] ECJ
In this famous case, the ECJ established that all trade marks, of all categories, must be capable of being indicators of the commercial origin of the goods or services concerned. It was 110 also settled that slogans not only can be registered as trade marks, but also that the assessment of distinctiveness of slogans should not be subject to stricter criteria than those which apply to other types of marks. It did add, however, in paragraph 34 that “the relevant public’s perception is not
necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others”. In paragraph 35 the Court
admitted that that premise was especially relevant for word marks consisting of advertising slogans.
As such, while the Court is here establishing a well-known rule for the assessment of future slogans, it is also confirming that these marks are of a particular nature which sets them apart from other marks. In paragraph 35 it even went on to add that competent authorities may consider the fact that the average consumer is not used to “making assumptions about the origin of products on the
basis of such slogans” therefore reenforcing that initial thought of it being more difficult to link a
slogan to a certain undertaking.
It was a great step forward however, in what concerns the registration of slogans, the fact that the Court agreed with the General Court to quash the decision of the Board of Appeal to apply stricter criteria to the mark at hand by claiming a need for slogans to be particularly original or imaginative in order to be distinctive. 111
Despite having agreed with the GC initially, the case was made even more interesting when the ECJ actually agreed with the Office in finding that the GC had applied incorrect criteria to the matter when it held that a mark was not devoid of distinctive character unless it demonstrated that the expression concerned was “commonly used in business communications and, in particular, advertising”. 112
One can assume that the General Court tried to introduce new elements to the distinctiveness test, when the ECJ had already established, in paragraph 42 of the same judgement, that the distinctiveness of a trade mark (within Article 7(1)(b) EUTMR) “means that the mark in question
makes it possible to identify the product for which registration is sought as originating from a given undertaking and, therefore, is able to fulfill the essential function of a trade mark”. Thus,
Ibid., §33 110 Ibid., §44 111 Ibid., §46 112
confirming that there is only one test to be used when determining the distinctiveness of trade marks.
3.1.2 Audi v OHIM 113
In 2003, Audi applied for registration of the mark “Vorsprung Durch Technik” at the Office, for many different categories of products, such as vehicles, clothing and telecommunications.
In 2004, an examiner from the Office considered the expression descriptive and concluded that the mark was devoid of any distinctiveness regarding all the goods and services for which it had applied for. The Board of Appeal considered that the mark constituted a combination of 114 words which only conveyed a banal, objective message. 115
The General Court said that the relevant public would perceive that expression as a “slogan containing an objective laudatory message”. It continued stating that it was also not memorable 116 enough and that its meaning was merely promotional, eventually leading to the dismissal of 117
Audi’s appeal due to its lack of distinctiveness. 118
The ECJ was more sympathetic towards Audi. It considered that the decision of the GC meant that it had to have applied to a slogan stricter criteria than those which it would have normally applied to other marks. This, as we have concluded previously, has been deemed 119 inappropriate by settled case-law of the Court. The ECJ decided against the GC, claiming that the latter’s reasoning lacked a justification of its finding of the fact that the slogan would not be perceived as an indication of the origin of the goods and services it concerned. 120
In paragraphs 56 and 57 of its Judgement, the ECJ explained that “all marks made up of
signs or indications that are also used as advertising slogans (…) convey by definition (…) an objective message (…) It is clear that those marks (…) are not devoid of distinctive character”; as
long as those marks are not descriptive, under article 7(1)(c) EUTMR, they can express an objective
Case C-398/08 P Audi v OHIM [2010] ECJ
113 Ibid., §5 114 Ibid., §9 115 Ibid., §13 116 Ibid., §21 117 Ibid. §15 118 Ibid., §40 119 Ibid., §46 120
