VORSPRUNG DURCH TECHNIK not registrable for technology-related goods

European Union
In Audi AG v Office for Harmonization in the Internal Market (OHIM) (Case T-70/06, July 9 2008), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had held that the trademark VORSPRUNG DURCH TECHNIK (German for 'advancement through technology') was not registrable for certain goods and services.
Audi AG has been using the slogan 'Vorsprung durch Technik' since 1971 to promote its cars. It uses this German slogan worldwide and does not translate it into other languages. In 1996 Audi sought to register the mark VORSPRUNG DURCH TECHNIK in Germany, but the application was rejected on the grounds that 'Vorsprung durch Technik' was a non-distinctive slogan. In 1997 Audi successfully demonstrated that VORSPRUNG DURCH TECHNIK had acquired a secondary meaning for certain goods in Class 12 of the Nice Classification and the mark was registered as a Community trademark for those goods (Registration 621 086). 
In January 2003 Audi AG sought to register VORSPRUNG DURCH TECHNIK as a Community trademark for various goods and services. The OHIM examiner held that VORSPRUNG DURCH TECHNIK could not be registered for those goods or services which are related to technology. Therefore, the examiner allowed the registration of the mark in respect of goods and services in Classes 16, 18, 35, 36, 41, 43 and 45, holding that those goods and services were not related to technology. However, the application was rejected for the remaining goods and services on the grounds that Audi had failed to produce any new evidence of secondary meaning. Audi appealed.
The Board of Appeal partially annulled the decision of the examiner, holding that:
  • the evidence of secondary meaning submitted by Audi for Registration 621 086 could also be used in the present proceedings; and
  • VORSPRUNG DURCH TECHNIK could be registered for the Class 12 goods.
However, the board affirmed the dismissal of the application in respect of the goods and services in Classes 9, 14, 25, 28, 37, 38, 39, 40 and 42. The board agreed with the examiner that:
  • these goods and services are related to technology; and
  • the slogan 'Vorsprung durch Technik' is not distinctive when used in relation to these goods and services. 
Audi appealed to the CFI.
Before the CFI, Audi argued that the board had not sufficiently given weight to the fact that the various goods and services covered by the application have a different degree of technicality. It claimed that these differences should have been taken into account and that the goods and services at issue should have been examined individually. The CFI rejected this argument, holding that the board had pointed out these differences in technicality, but had found that all the goods and services at issue had at least some connection to technology. Therefore, the board had correctly found that the slogan 'Vorsprung durch Technik' conveys an objective message and that the relevant public would see the mark as a descriptive slogan. In reaching its decision, the CFI relied on the judgment of the European Court of Justice in LIVE RICHLY (Case T-320/03, September 15 2005).
Audi further argued that 'Vorsprung durch Technik' was not perfectly correct from a grammatical point of view, which triggers a process of evaluation and reflection on the part of consumers. Therefore, Audi claimed that the mark VORSPRUNG DURCH TECHNIK is fanciful and distinctive. The CFI disagreed, stating that 'Vorsprung durch Technik' is undoubtedly a promotional slogan which would be easily understood by consumers. Although the CFI conceded that 'Vorsprung durch Technik' may have various meanings, it concluded that the phrase:
  • would not be perceived by consumers as an indication of origin of the goods or services; and 
  • could thus not be used as a trademark.
Audi finally argued that the board had infringed its right to be heard. Audi alleged that the board had refused to register the mark for certain goods and services which had been accepted by the examiner. The CFI dismissed this argument, holding that the board's decision was clear and had annulled the decision of the examiner only in respect of certain goods in Class 12. 
Even though Audi has used the slogan 'Vorsprung durch Technik' worldwide for over 30 years, such widespread and long-term use was insufficient to register the mark VORSPRUNG DURCH TECHNIK for goods and services which are related to technology. However, even though Audi's application was partially rejected, this does not mean that the phrase 'Vorsprung durch Technik' is free for use by competitors. 
Carsten Albrecht, FPS Fritze Paul Seelig, Hamburg

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