Advertising slogans for financial services held to lack distinctive character

European Union

On January 29 2015 the General Court issued two similar decisions involving the same applicant, Blackrock Inc (Case T-59/14 and Case T-609/13).

In Case T-609/13 Blackrock applied for the registration of the Community word mark SO WHAT DO I DO WITH MY MONEY for services in Classes 35 and 36 of the Nice Classification, while in Case T-59/14, it applied for the registration of the Community word mark INVESTING FOR A NEW WORLD, also for services in Classes 35 and 36. The General Court confirmed the decisions of the Boards of Appeal of OHIM in these cases and rejected the trademark applications on the ground that the marks, which consisted of promotional slogans, lacked distinctive character.

In rendering these decisions, the General Court considered that the relevant public in relation to these trademark applications consisted of English-speaking average consumers and professionals, whose level of attention was relatively low with regard to promotional indications for the services for which registration was sought.

Both trademark applications consisted of simple English words, banal expressions without any particular semantic depth which conveyed a clear and unequivocal message for the public, and which did not require any interpretative effort in order to be understood by English-speaking consumers. Therefore, it was considered that consumers would immediately establish a direct link with the services for which registration was sought, mainly finance and investment services.

The General Court considered that the Board of Appeal had carried out an in-depth analysis of the ability of both expressions to indicate to consumers the commercial origin of the services at issue, before examining whether these expressions were purely promotional and laudatory formulae. The criteria for assessing marks such as those at issue were “not stricter, but also not more lenient” than those applicable to other categories of marks. Contrary to what the applicant claimed, the General Court considered that the Board of Appeal had not in any way ruled out the possibility that signs might in principle be understood both as promotional messages and as indications of commercial origin and, therefore, it had not relied on the test - which came from the case-law prior to the judgment in Audi v OHIM (C-398/08 P) - that it was sufficient that the mark was seen as a promotional slogan for it to be precluded from having distinctive character.

Further, the General Court pointed out that the mark VORSPRUNG DURCH TECHNIK, which was the subject of the judgment in Audi and had been invoked by the applicant, means “advance or advantage through technology”, and has distinctive character for the relevant public since that mark could “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”.

Unlike the mark VORSPRUNG DURCH TECHNIK, both trademarks in the present case did not make possible to identify the commercial origin of the services for which registration was sought and, as such, they did not have distinctive character, contrary to what the applicant claimed.  

The court concluded that, in the contested decisions, the trademark applications were not rejected on the sole ground that they would be perceived as promotional slogans, as claimed by the applicant, but on the ground that, beyond their promotional meanings, there was nothing that would enable the relevant public to perceive them as an indication of the commercial origin of the services at issue.

Delia Belciu, Nestor Nestor Diculescu Kingston Petersen, Bucharest

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