Nearly 15 years after OHIM first opened, slogan marks still find it hard to get inside. In an age of soundbites, the attractiveness of a few catchy words as a marketing tool has never been greater, and slogans such as Audi's well-known Vorsprung durch Technik are powerful communicators for business. Yet, the lengths to which companies like Audi have to go to protect their investment in distinctive slogans demonstrate that more progress is needed in educating examiners about the principles that apply to such marks.
Audi first secured CTM protection in 2001 for Vorsprung durch Technik (in German, "progress through technology") under no. 621086 for vehicles and parts in Class 12. Protection was granted on the basis of acquired distinctiveness, although by an oversight OHIM failed to communicate that fact to Audi.
The application was originally filed in 1997, and by 2003 Audi sought to protect its slogan for a much wider range of goods and services. It reapplied in Classes 9, 12, 14, 16, 18, 25, 28, 35 - 43 and 45. Given the apparent acceptance of CTM 621086 as inherently distinctive, the examiner's rejection of the new application as non-distinctive must have come as a surprise.
Audi pointed to the prior acceptance, whereupon the examiner admitted OHIM's mistake in failing to inform Audi about the finding of acquired distinctiveness. Nonetheless, the examiner maintained the objection to the new application on the basis that the mark was merely a laudatory advertising slogan which lacked distinctiveness for all the goods and services claimed, all of which related, if only remotely, to technology. Proof of acquired distinctiveness was required for the new application in all classes, even, surprisingly, in Class 12.
Audi appealed unsuccessfully to the Second Board of Appeal, who were prepared to allow the mark only in Class 12, where proof of acquired distinctiveness had already been recognised. A further appeal to the General Court brought no further joy, and in January the ECJ handed down a ruling on Audi's final appeal.
...Until the ECJ Intervenes
The ECJ's ruling exposes a series of errors on the part of OHIM and the General Court in applying the case law relating to slogan marks.
In particular, the ECJ found that the General Court appeared to have paid only lip-service to prior decisions recognising that slogan marks are not excluded from registration purely because they are also used in advertising or as incitements to purchase, and that no stricter criteria for distinctiveness can be required of them than for other types of mark. There can be no requirement, for example, that slogans be imaginative or display a "conceptual tension which would create surprise and so make a striking impression" (OHIM v Erpo Möbelwerk; SAT.1 v OHIM, Case C-392/02 P).
In Audi's favour, the General Court had found that Vorsprung durch Technik could have a number of meanings, was effectively a play on words and might even be regarded as imaginative, surprising and unexpected, and therefore easy to remember. However, in spite of all this, the General Court held that the mark could only be distinctive if it was immediately perceptible as an indication of commercial origin. In this case, the General Court found that the slogan was not immediately perceptible in that way, because it was likely to be understood first and foremost as a laudatory "promotional formula".
The ECJ harshly criticised this reasoning. The mere fact that a word mark has a laudatory connotation did not mean that it could not also function as a guarantee of origin as well. Provided that were the case, it was irrelevant that the mark might also be understood as a promotional formula. Ruling out Audi's mark because of its promotional potential was tantamount to finding that slogan marks, which typically have a promotional message as well as an origin-indicating one, could not be registrable at all because origin was not necessarily the "first and foremost" message conveyed by the marks.
Notably, the General Court had appeared to accept Audi's mark as being imaginative, surprising and easy to remember, and even perhaps a play on words. Yet this was, the ECJ noted, entirely inconsistent with the finding that the slogan lacked distinctiveness. The General Court had erred in apparently requiring such additional elements of attractiveness in slogan marks, but even so, having found they were there, the Court had been wrong to give those factors no weight in the assessment of inherent distinctiveness.
The ECJ noted the Board of Appeal's finding, at an earlier stage, that the slogan was no more than a banal message to the effect that "technological superiority enables the manufacture and supply of better goods and services." However, even if the mark were to convey that message, the ECJ did not regard it as sufficiently direct and descriptive of the goods to justify finding a lack of distinctiveness on that basis or even an objection under Article 7 (1) (c) CTMR. The mark required "a measure of interpretation" and exhibited "a certain originality and resonance" which made it easy to remember, all of which pointed to the mark being capable of distinguishing.
Audi found success at last, but it had to drive a long way to get there. Moreover, the fundamental nature of the errors made by OHIM and the General Court show that there is a worryingly wide gap between preaching and practice when it comes to the acceptance of slogan marks.
The ECJ rightly quashed the notion, implicit in the decisions under review, that the presence of a strong advertising message will suffice to exclude a slogan mark from trademark protection. The best slogan marks will always have such a message, and it will often-quite deliberately-be dominant. However, that does not mean that a slogan is not also inherently capable of distinguishing goods and services. The best slogans will do both, but the advertising power of the mark will almost always be at the fore given the purpose and role of slogans: namely, to stick to the reader or listener like glue, and then to unravel their origin-indicating message.
Interestingly, the fame of Audi's slogan for motor vehicles appeared to influence the ECJ in its assessment of inherent distinctiveness. It remarked that the actual success of Audi's slogan as an origin-indicator in Class 12 might make it more likely that the mark could inherently distinguish other goods and services as well, since the average consumer was already used to encountering it in that way for some goods. This approach may be useful to brand owners, like Audi, who have a successful mark registered on the basis of acquired distinctiveness, and who wish to expand the protection to other classes without having to file evidence in support of it.
The ECJ's reasoning on this point suggests that the benefits of acquired distinctiveness might effectively reach out beyond the area of existing protection by making it easier to register the mark as inherently distinctive later for new categories of goods or services. In practice this argument is likely to be difficult, and the ECJ did not explore it sufficiently deeply to give it meaningful support. For owners of successful slogans, though, it may be a card well worth playing where product and service lines expand, but budgets for proof of acquired distinctiveness do not.