ECJ outlines the principles for registrability of advertising slogans

In Office for Harmonization in the Internal Market v Erpo Möbelwerk GmbH, the European Court of Justice (ECJ) has held that the slogan 'das Prinzip der Bequemlichkeit' ('the principle of comfort') does not lack distinctiveness for goods in Classes 8 and 12 of the Nice Classification, which include furniture.

The Office for Harmonization in the Internal Market (OHIM) examiner rejected the application of German company Erpo Möbelwerk GmbH to register the slogan 'das Prinzip der Bequemlichkeit' as a Community trademark. The examiner held that the word combination (i) designated a characteristic of the goods for which registration was sought, and (ii) was devoid of any distinctive character. The Third Board of Appeal annulled the examiner's decision to reject the claim for products in Class 8. However, it dismissed the rest of the appeal, stating that the slogan did not meet the requirements of Article 7(1)(b) and (c), and Article 7(2) of the Community Trademark Regulation.

The European Court of First Instance (CFI) overturned the board's refusal, reasoning that 'das Prinzip der Bequemlichkeit', assessed in its entirety and on the basis of all the elements of which it is composed, cannot be regarded as consisting exclusively of signs that may serve to designate the quality of the goods concerned (Article 7(1)(c)). Furthermore, lack of distinctiveness (Article 7(1)(b)) cannot derive from a mere absence of imagination or originality as otherwise a stricter criterion of registration would apply to slogans than to other types of signs. Additionally, the CFI held that the board had not provided any evidence that the slogan was commonly used in business communications and, in particular, advertising.

The ECJ confirmed the CFI's findings but disagreed on some of the grounds. The ECJ gave the following guidelines on the assessment of absolute grounds of refusal for slogans:

• In accordance with the CFI, the ECJ made it clear that, in general, the nature of certain categories of trademarks does not justify imposing stricter criteria to establish distinctiveness. The criteria for assessing distinctiveness are the same for all the various categories of marks. However, when assessing the distinctiveness of a slogan that commends the quality of the product to which it applies, the authorities may take account of the fact that the average consumer may regard the phrase as a mere promotional slogan rather than a sign to identify the product as originating from a particular undertaking.
  
  
• The distinctiveness of a mark made up of signs or phrases that are also used as an advertising slogan has to be assessed on the basis of the general principles established by the ECJ with regard to trademarks: identification of the product as originating from a specific undertaking, assessment of distinctiveness in relation to the goods or services applied for and in relation to the perception of the average consumer of the products or services in question, who are reasonably observant, circumspect and well-informed.
  
  
• The ECJ confirmed its strict test established in Libertel, stating that the examination of applications for registration must not be minimal but must be stringent and full in order (i) to prevent trademarks from being improperly registered, and (ii) to make sure that, for reasons of legal certainty and sound administration, marks whose use could be successfully challenged before the ECJ are not registered (for a background discussion of the Libertel Case, see The future of colour registration is orange).

Further, the ECJ ruled that the CFI applied a criterion other than the one laid down by Article 7(1)(b) when it held that a mark is not devoid of distinctive character unless it is demonstrated that the phrase concerned is commonly used in business communications. However, the ECJ approved the CFI's conclusion and dismissed the OHIM's appeal.

It is hoped that the ECJ's guidelines on the protectability of slogans will help to clarify OHIM practice.

For a detailed discussion of this practice, see Setting standards for Europe: the OHIM 10 years on.

Florian Schwab, Boehmert & Boehmert, Munich