Trademark Protection of Slogans Easier
Court of Justice of the European Union, 21 January 2010,
C-398/08 (Audi/BHM)
The European Court of Justice ("ECJ") recently rendered a
judgment about the extent to which advertising slogans can be
registered as trademarks.
According to existing case law of the European Court of Justice,
advertising slogans were already not excluded from trademark
registration (ECJ 4 October 2001, C-517/99 and 21 October 2004,
C-64/02). However, this case law implied that the threshold for the
registration of such signs as trademarks seemed to be higher than
for 'ordinary' word marks, because the public will more
easily perceive advertising slogans as a promotional description,
rather than as a distinctive sign of a certain firm. It was
therefore not an easy task to make advertising slogans eligible for
trademark protection. Registrations were often refused by the
European trademarks office (OHIM) and the Benelux trademarks office
(BOIP) due to a lack of distinctive character, which is a
requirement for registration as a trademark. Dutch courts have also
not shown themselves keen to consider slogans to be protected as
trademarks.
As a result, firms in the Netherlands often fall back on
non-legal 'protection systems' such as the register of
catch-phrases (www.gvr-slagzinnenregister.nl). By registration
in this register, at least the date of the first use of the
catch-phrase can be recorded, and third parties may be deterred
from using similar or identical catch-phrases. However, by
registering a catch-phrase in this register no hard legal right is
obtained with which one can take action against third parties.
The trademark application by car manufacturer Audi for the
slogan Vorsprung durch Technik (in English: "advance
or advantage through technology") was one of those that the
Community trademarks office OHIM refused. Audi did not resign
itself to this refusal and continued litigation via the Court of
First Instance through to the ECJ. Audi was successful, since the
ECJ has now set aside OHIM's refusal and its confirmation by
the Court of First Instance. The ECJ based itself on the position
that the mere fact that a slogan is perceived by the relevant
public as a "promotional formula" does not automatically
entail that the slogan is devoid of any distinctive character. In
this connection the ECJ also considered the following:
"Thus, in so far as those marks are not descriptive,
they can express an objective message, even a simple one, and still
be capable of indicating to the consumer the commercial origin of
the goods or services in question. That can be the position, in
particular, where those marks are not merely an ordinary
advertising message, but possess a certain originality or
resonance, requiring at least some interpretation by the relevant
public, or setting off a cognitive process in the minds of that
public."
The fact that the slogan Vorsprung durch Technik can
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 by the public, was a reason for the ECJ
to accept that it has distinctive character.
Especially when a slogan has a certain degree of originality and
makes the public 'start to think', for example by a play on
words, the slogan may therefore have distinctive character and be
registered as a trademark.
The Audi judgment of the ECJ gives European and
national trademark offices, but also courts, a tool to assume
distinctive character of advertising slogans more easily. As a
result, it may well become easier to make slogans eligible for
trademark protection, and to invoke such trademarks against third
parties.