General Court explores limits of registrability of promotional slogans

In Delphi Technologies Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-515/11, June 6 2013), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had refused to register the word mark INNOVATION FOR THE REAL WORLD as a Community trademark.

On July 17 2008 Delphi Technologies Inc applied to register the mark INNOVATION FOR THE REAL WORLD for goods in Classes 7, 9, 10 and 12 of the Nice Classification. The examiner, pursuant to Article 7(1)(b) and Article 7(2) of the Community Trademark Regulation (207/2009), refused to register the mark on the ground that it was devoid of distinctive character.

The Second Board of Appeal of OHIM dismissed Delphi’s appeal, stating that the sign would be understood by the relevant public, without interpretation, as a laudatory message that the goods delivered by Delphi were innovations for the real world. The meaning of that expression was even clearer since the goods concerned pertained to a market where innovation is essential.  

Delphi appealed to the General Court.

In its decision, the General Court mainly considered whether the Board of Appeal had correctly applied the criteria laid down in Audi v OHIM (Case C-398/08 P, VORSPRUNG DURCH TECHNIK) and OHIM v Erpo Möbelwerk (Case C-64/02 P, DAS PRINZIP DER BEQUEMLICHKEIT).

The court found that:

• the assessment of the distinctive character of such signs cannot be limited to an evaluation of each of their words or components, considered in isolation, but must, on any view, be based on the overall perception;
• the sign INNOVATION FOR THE REAL WORLD, considered as a whole, is instantly apparent to the relevant English-speaking public as meaning that the goods covered by the mark applied for are innovations for the real world;
• in respect of the goods at issue, the relevant public would perceive the sign INNOVATION FOR THE REAL WORLD, directly and without further consideration, as an allusion to innovative goods and not as an indication of the commercial origin; and
• the addition of the expression ‘for the real world’ to the word ‘innovation’ only reinforces the alleged positive qualities of the goods at issue.

However, the court pointed out that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services that it covers. A mark consisting of an advertising slogan must be regarded as devoid of distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods or services in question.

Ingrid Matsina, AAA Legal Services, Tallinn