Visa successfully registers slogan for financial services

On April 21 2009 Visa International Service Association, the US multinational financial services corporation, applied for the registration of MORE PEOPLE AROUND THE WORLD GO WITH VISA for services in Class 36 of the Nice Classification. The Montenegrin Intellectual Property Office (IPO) rejected the application, finding that the mark’s “general appearance did not enable the goods/services to be distinguished in the course of trade”.

The IPO found that the slogan was a simple and trivial claim that “a lot of people around the world go with Visa”; therefore, the mark was not distinctive and was not suitable to distinguish the services at issue in the course of trade. Further, the IPO found that the mark “designated exclusively the type, purpose, time or method of production, quality, price, quantity, weight or geographical origin of the goods/services”, specifying that the mark designated the type of services in Class 36 - financial affairs - carried out through Visa credit cards.

Visa disagreed with both findings, identifying in its response a number of slogans registered in the territory of Montenegro. Visa explained that slogans often appear to be simple claims that are easy to remember. Further, Visa argued that the purpose of a slogan is to advertise - that is, to create an association in customers' minds between the slogan and the source of the product, and to motivate customers to use a certain product or service. Visa explained that the slogan at issue was not a simple claim: it represented a subtle invitation to use Visa cards. Visa also pointed out that the mark contained the distinctive element 'Visa', which is protected by three trademark registrations in Montenegro; therefore, the slogan could not be held to be non-distinctive.

With regard to the second finding (ie, that the slogan designated the type of services in Class 36, namely financial affairs facilitated through Visa payment cards), Visa argued that the slogan did not designate these services in any way. Moreover, the registered trademark VISA, which is part of the slogan, is a well-known mark and had strong recognition power for Class 36 services.

Finally, Visa presented numerous registrations already obtained for the slogan worldwide, as well as for two similar trademarks (PEOPLE EVERYWHERE GO WITH VISA and MORE PEOPLE GO WITH VISA) which are registered Community trademarks. These trademarks will become part of the Montenegrin legal system once Montenegro joins the European Union.

The IPO accepted Visa's arguments and invited the latter to pay the registration fees.

This case is important in that it establishes a practice with regard to the registration of slogans in Montenegro.

Jasna Jusic, PETOŠEVIC, Podgorica