ECJ confirms VORSPRUNG DURCH TECHNIK principles - but finds slogan unregistrable

In Smart Technologies ULC v Office for Harmonisation in the Internal Market (OHIM) (Case C-311/11 P, July 12 2012), the Court of Justice of the European Union (ECJ) has upheld a decision of the General Court in which the latter had found that the German slogan 'Wir machen das Besondere einfach' lacked distinctiveness.

In October 2008 applicant Smart Technologies ULC filed a Community trademark application for the slogan 'Wir machen das Besondere einfach' ('We make special (things) simple') for various computer-related goods in Class 9 of the Nice Classification. The examiner rejected the application, holding that the slogan was devoid of any distinctive character. The decision was upheld by both the First Board of Appeal of OHIM and the General Court.

The General Court took into account the relevant case law, including the decision of the ECJ in Audi v OHIM (VORSPRUNG DURCH TECHNIK) (Case C-398/08 P). The court argued that the slogan 'Wir machen das Besondere einfach' was a mere promotional formula and that it would not immediately be perceived as an indication of the commercial origin of the goods or services in question.

In its factual analysis, the General Court stated that the slogan:

• was a simple combination of five standard German words which would be immediately understood as an advertising slogan containing a laudatory message; and
• did not contain any unusual variations with regard to German rules of syntax and grammar.

The court further stated that:

• the slogan did not introduce any word play or elements of conceptual intrigue or surprise; and
• the specific features of the mark did not give it any particular originality or resonance, or trigger in the minds of the relevant public a cognitive process or interpretative effort.

Furthermore, the court found that, although the term 'wir' (“we”) refers to the manufacturer, this did not make the slogan distinctive.

On appeal to the ECJ, the applicant argued that the General Court had misunderstood Audi v OHIM by confining itself to examining whether the slogan was perceived as a mere promotional formula by the relevant public.

The ECJ disagreed with the applicant. First, it reiterated the criteria set forth in Audi v OHIM and previous decisions concerning slogans - namely:

• Distinctiveness means that the mark serves to identify the product in question as originating from a particular undertaking and thus to distinguish that product from those of other undertakings. This must be assessed by reference, first, to the goods or services in respect of which registration is sought, and second, to the relevant public’s perception of that mark.
• It is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign. However, the relevant public’s perception is not necessarily the same in relation to each of those categories and, therefore, it may prove more difficult to establish the distinctiveness of a mark in certain categories. However, this does not justify the creation of specific criteria for slogans; in particular, a slogan cannot be required to display “imaginativeness” or “conceptual tension which would create surprise and so make a striking impression”.
• The fact that a slogan could also be perceived as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient in itself to support the conclusion that the mark is devoid of any distinctive character.
• A distinctive mark can be perceived by the relevant public both as a promotional formula and as an indication of commercial origin. The fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character.

Although this last point seems to go further than previous decisions of the ECJ on the inherent registrability of advertising slogans (and, in particular, Erpo Möbelwerk v OHIM), the ECJ agreed with the General Court that the slogan at issue did not have sufficient distinctive character. The ECJ agreed with the applicant that the language used by the General Court was slightly different from that used by the ECJ in Audi v OHIM. However, the ECJ agreed with the factual evaluation of the General Court and confirmed that the latter had properly applied the rules laid down in Audi v OHIM in the present case.

The applicant also criticised the General Court for applying stricter rules to advertising slogans, even though such slogans are not mentioned in the Community Trademark Regulation (40/94). The ECJ disagreed with this point of view, stating that, even though slogans are not mentioned in the regulation, they are also word marks, and they do not need to be considered as a special sub-category of word marks, or even as a distinct category of word marks. The ECJ concluded that the General Court had properly applied the relevant rules and guidelines.

In addition, the applicant criticised the General Court for not taking sufficiently into account the fact that the products in Class 9 were aimed at specialists in the computer field and that these specialists have a higher level of attention and a greater degree of knowledge than that of the ordinary consumer. The ECJ held that the level of attention and the degree of knowledge have no decisive influence on the legal criteria used to assess the distinctiveness of a mark. Even if specialists have a higher degree of attention and a greater knowledge, this did not justify lowering the threshold of distinctiveness for an advertising slogan. The court further stated that the evaluation of the General Court was a factual assessement that could not be questioned by the ECJ on appeal.

Consequently, the application for the registration of 'Wir machen das Besondere einfach' was unsuccessful. Although the ECJ has now confirmed the general rules and guidelines set forth in the VORSPRUNG DURCH TECHNIK decision, it seems that it had followed a more generous approach in that case. This makes things more difficult for both applicants and their legal advisors.

Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg