Deutsche Bank fails to obtain trademark protection for slogans

In Deutsche Bank AG v Office for Harmonisation in the Internal Market (OHIM) (Cases T-539/11 and T-291/12, March 25 2014), the General Court has confirmed decisions of the Fourth Board of Appeal of OHIM in which the latter had found that Deutsche Bank's applications for the registration of the slogans 'Leistung aus Leidenschaft' and 'Passion to Perform' as word marks were inacceptable on the ground that they lacked distinctiveness.

In 2009 Deutsche Bank filed an application to register the word mark LEISTUNG AUS LEIDENSCHAFT as a Community trademark (CTM) with OHIM for services in Classes 35, 36 and 38 of the Nice Classification. In 2011 Deutsche Bank filed an international application designating, among others, the European Union, for registration of the word mark PASSION TO PERFORM for, among other things, services in Classes 35, 36 and 38.

OHIM refused to register both marks, holding that they were devoid of any distinctive character. The Fourth Board of Appeal of OHIM agreed with these decisions and dismissed the appeals filed on behalf of Deutsche Bank.

The Board of Appeal found that the trademarks applied for would be perceived only as a laudatory statement by the relevant public and, therefore, they were incapable of fulfilling their function of distinguishing the services as to their commercial origin. Consequently, they did not comply with the conditions set forth in Article 7(1)(b) of the Community Trademark Regulation (207/2009).

In particular, the Board of Appeal held that the relevant public were end consumers and commercial companies. Both groups usually pay only a low level of attention in connection with promotional and advertising slogans. They would not perceive the signs as indications of the commercial origin of the services referred to. It further found that not only the meaning of each elements of the trademarks, but also of the signs as a whole, lacked originality. Despite the existence of earlier similar registrations, OHIM stated it was not bound by previous decisions.

The Second Chamber of the General Court confirmed OHIM's decisions as to the lack of distinctiveness of both signs and dismissed Deutsche Bank's actions in their entirety.

The General Court's main reasons were as follows:

• Protection could not be refused only on the ground that the signs at issue were slogans.
• The criteria for the registration of slogans are not stricter than those applicable to other types of trademarks - in particular, slogans cannot be required to be more fanciful or original than other types of marks.
• A slogan has no distinctive character if it is perceived by the relevant public only as a promotional formula. However, it is considered as distinctive if it is regarded as an indication of the commercial origin of the relevant services.
• The consumers' level of attention varies according to the type of goods or services, but it is generally low with regard to advertising and promotional slogans.
• A trademark must be considered as a whole, without analysing its various details. However, as a first step, each individual element can be examined.
• OHIM and the EU courts are not bound by former decisions in which supposedly similar and/or comparable signs were registered. The CTM regime is an autonomous system.

Taking the above into consideration, the General Court came to the conclusion that OHIM had been correct in refusing protection to both word marks. The signs lacked the minimum level of distinctiveness required to obtain trademark registration.

This decision once again highlights the difficulties faced by applicants seeking to obtain trademark registration for slogans. European IP offices and courts often refuse such applications on the grounds that the slogans are merely descriptive of the goods and services at issue and lack distinctiveness. As is the case with other types of trademarks, slogans cannot be registered if they are clearly and exclusively descriptive and lack any distinctive character.

Following the decision of the Court of Justice of the European Union in VORSPRUNG DURCH TECHNIK (Case C-398/08), brand owners were optimistic that they could obtain trademark registration for their slogans, at least with OHIM. However, this optimism has since been tempered. A lot of applications for slogans have been refused since then, and it seems that, in general, OHIM has become increasingly strict in granting trademark protection.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich