Level of attention likely to be low with regard to promotional indications

European Union
In Vion NV v Office for Harmonisation in the Internal Market (OHIM) (Case T-251/08, September 23 2011), the General Court has upheld OHIM's refusal on absolute grounds to register the word mark PASSION FOR BETTER FOOD.

In April 2006 Vion NV applied to register PASSION FOR BETTER FOOD as a Community trademark (CTM) for goods in Classes 5, 29 and 30 of the Nice Classification, including pharmaceutical and veterinary preparations and food supplements for medical purposes in Class 5, and a wide range of foodstuff in Classes 29 and 30. In February 2007 the OHIM examiner rejected the application on the grounds that PASSION FOR BETTER FOOD was devoid of any distinctive character within the meaning of Article 7(1)(b) of the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)). This decision was upheld by the Fourth Board of Appeal of OHIM in April 2008. Vion appealed to the General Court.

The General Court first reiterated earlier case law observing that the registration of a trademark consisting of signs or indications that are used as advertising slogans is not excluded as such. However, a sign which fulfils functions other than being a trademark is distinctive only if it may be immediately perceived as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the trademark owner from others. The distinctive character - or lack thereof - of advertising slogans must be assessed on the same basis as any other mark.

The General Court agreed with the Board of Appeal's finding that, since the mark PASSION FOR BETTER FOOD is composed of elements from the English language, the relevant public is the English-speaking public, or a public which is not English-speaking but has a sufficient grasp of the English language. Furthermore, the court stated that the relevant public for the goods in Classes 5, 29 and 30 consisted of end consumers. Even if professionals in the relevant industries, who may form a more attentive public in comparison to end consumers, had to be taken into account, their awareness can be relatively low when it comes to promotional indications, which well-informed consumers do not see as decisive.

As regards the perception of the mark PASSION FOR BETTER FOOD by the relevant public, the General Court did not contest the Fourth Board of Appeal's assessment that the slogan was composed of commonplace words which would be understood by the public as a simple laudatory formula, and not as an indication of the commercial origin of the goods in question. The court held that the slogan gives a clear message of a passion for better foodstuff or, with respect to the products in Class 5, better quality. 

Regarding Vion's argument that OHIM had failed to justify the objection in relation to the Class 5 goods, the General Court held that the Board of Appeal had demonstrated to the requisite legal standard that there was a lack of distinctive character in relation to the Class 5 goods as well. The court noted that a mark not only lacks distinctive character if the slogan has a direct laudatory meaning, but also if the products' characteristics are described in an abstract sense. Accordingly, the mark PASSION FOR BETTER FOOD was devoid of distinctive character in respect of all the goods at issue and OHIM's refusal to register the mark was upheld.

The case serves to highlight that, although signs or indications that are also used as advertising slogans, indications of quality or incitement to purchase the goods or services at issue are not barred from registration as such, the threshold for a successful registration is still very high. An applicant seeking to register an advertising slogan as a CTM would be well advised to file evidence during the application proceedings showing that the relevant public perceives the slogan as an indication of commercial origin.
 
Florian Traub, Squire Sanders & Dempsey (UK) LLP, London

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