• EUROPEAN PERSPECTIVES

    Pendulum Stops Swinging for Slogans
    ECJ Settles Approach to Examination of Slogan Marks

    In October, the ECJ handed down its long-awaited judgment in OHIM v. Erpo Möbelwerk GmbH (Case C-64/02 P), on the distinctiveness of slogans as trade marks. Its guidance is of great importance in assessing whether slogan marks are likely to be accepted for registration.

     

    Background

    The facts of this case are well-known, but a short summary will help to set the scene. Erpo Möbelwerk applied to register DAS PRINZIP DER BEQUEMLICHKEIT (German for “The Principle of Comfort”) in respect of various goods, including furniture. OHIM objected that the mark was a mere advertising slogan which was devoid of any distinctive character under Article 7 (1) of Council Regulation (EC) 40/94. On appeal, the Board of Appeal upheld the refusal on the grounds that the mark was a promotional slogan which did not display any element of imaginativeness or “conceptual tension which would create surprise and so make a striking impression.”

    Erpo then appealed to the CFI, who rejected the requirement for imaginativeness, and confirmed that it was inappropriate to apply to slogans criteria which were stricter than those applicable to other types of marks. However, the CFI did note that the relevant public’s perception of slogans is not necessarily the same as for other types of marks. Taking this into account, it ruled that an Article 7 (1) (b) objection would not apply to a slogan unless it was demonstrated that the phrase concerned was commonly used in business communications and, in particular, in advertising. That had not been the case here.

    On the final, and most recent, rung of the appellate ladder, OHIM itself appealed to the ECJ, arguing that the CFI was wrong to rule that the slogan was distinctive, because the assessment of inherent distinctiveness should not take use in the marketplace into account.

     

    The ECJ’s Judgment

    The ECJ agreed that the CFI had erred, but not that the error should result in refusal. The Court agreed that it was appropriate to take into account that slogans might be perceived differently to other types of marks. However, introducing additional tests such as whether the mark was in common use in business communications was inappropriate. The correct test for whether a mark of any kind was devoid of distinctive character was to ask whether the mark would make it possible to identify the product for which registration is sought as originating from a given undertaking, and therefore to distinguish the product from those of other undertakings.

    The ECJ noted that the test imposed by the CFI also breached the principle that each ground of objection under Article 7 (1) must be assessed separately. Article 7 (1) (d), an objection not raised in this case, barred the registration of marks which had become customary in the current language or in the bona fide and established practices of the trade. Marks which had become customarily used in business papers or advertising were apt for refusal under this ground. The CFI’s test under Article 7 (1) (b) therefore threatened to elide that provision with Article 7 (1) (d), and was therefore wrong on this basis, as well.

    The ECJ therefore found that the CFI’s judgment was vitiated by an error of law, but that the outcome was not affected. The Article 7 (1) (b) objection could not apply.

     

    Comment

    With this judgment, the swinging pendulum of tests for the registrability of slogan marks imposed by OHIM, the BoA and the CFI has finally come to rest. The settlement of this dispute will come as a relief to practitioners and brand owners alike, and the result re-introduces common sense into the examination process for slogan marks.

    The decision of the CFI had given rise to real doubt about how the registrability of slogans was to be assessed. If it was truly necessary to consider whether the mark was in common use in business communications and advertising, it would not be straightforward to make that assessment. “Common” is a question of degree which might vary depending on the nature of the field in question. Moreover, the new test appeared to introduce a requirement for OHIM to have a basis, derived from market conditions, for raising an Article 7 (1) (b) objection to slogan marks, which had not hitherto been required for any type of mark.

    The ECJ’s confirmation that the question to be asked is, instead, whether the mark is capable of distinguishing in the context of the goods claimed and the relevant public, makes perfect sense. The CFI perhaps sensed this likely outcome, as its June decision in Norma Lebensmittelfilialbetrieb GmbH & Co. KG v. OHIM (Case T-281/02) on MEHR FÜR IHR GELD (German for “More for Your Money”) concentrated on whether the mark was capable of being perceived as a distinguishing sign, or whether it was likely to be perceived merely as a promotional slogan indicating that the goods offered consumers an advantage in terms of quantity and/or quality. This more apt approach foreshadowed the ECJ’s ruling in Erpo Möbelwerk.

    In this age of short attention spans, the prime importance of slogans and jingles as punchy, memorable and effective ways of carving out a niche in the public mind cannot be doubted. The fact that their ability to communicate trade origin is now more recognised than before can only be good for brand owners.