VORSPRUNG DURCH TECHNIK springs to victory

European Union
In Audi AG v Office for Harmonization in the Internal Market (OHIM) (Case C-398/08 P, January 21 2010), the Court of Justice of the European Union (ECJ) has set aside a judgment of the Court of First Instance (CFI) and annulled a decision of the Second Board of Appeal of OHIM in which the latter had rejected, in part, the application for the registration of the mark VORSPRUNG DURCH TECHNIK. 
Audi AG has been using the slogan 'Vorsprung durch Technik' (German for 'advancement through technology') to promote its cars since 1971. Even though the slogan is in German, it has not been translated into other languages. In 1996 Audi’s first attempt to register the slogan in Germany failed. The German examiner considered that the mark lacked distinctive character. However, in 1997 Audi successfully demonstrated that VORSPRUNG DURCH TECHNIK had acquired a secondary meaning for goods in Class 12 of the Nice Classification (cars) and the mark was registered as a Community trademark (CTM) (Registration 621 086).
Audi subsequently applied to register VORSPRUNG DURCH TECHNIK as a CTM for various goods and services in Classes 9, 12, 14, 16, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45. The OHIM examiner allowed the registration of the mark for goods and services in Classes 16, 18, 35, 36, 41, 43 and 45, because those goods and services were not related to technology. However, the examiner rejected the application for all the remaining goods and services, holding that:
  • VORSPRUNG DURCH TECHNIK lacked distinctiveness for those goods and services; and
  • Audi had failed to produce any new evidence of a secondary meaning.
Audi appealed. The Second Board of Appeal of OHIM followed Audi’s line of argumentation with regard to the Class 12 goods, and held that Audi could rely on the evidence of secondary meaning submitted for Registration 621 086. However, the board affirmed the rejection of the application in respect of the goods and services in Classes 9, 14, 25, 28, 37, 38, 39, 40 and 42, holding that:
  • these goods and services were related to technology; and
  • VORSPRUNG DURCH TECHNIK was not distinctive in relation to them.
On appeal, the CFI agreed with the board and rejected Audi’s action (for further details please see "VORSPRUNG DURCH TECHNIK not registrable for technology-related goods"). Audi took the case to the ECJ for further review.
Audi argued that the requirements for the registrability of a slogan should not be more stringent than those applying to word marks. According to Audi, the fact that VORSPRUNG DURCH TECHNIK could be regarded as an advertising slogan and was laudatory in nature did not preclude it from having sufficient distinctive character.
The ECJ first reiterated the basic principles of distinctiveness - namely, that a trademark possesses distinctive character insofar as it serves to identify the goods and/or services for which registration is sought as originating from a particular undertaking. The ECJ also stated that distinctive character must be assessed with regard to the specific goods and/or services concerned and in light of the public’s perception of the mark. It recalled that it would be inappropriate to apply to slogans stricter criteria than those applicable to other types of signs.
However, the ECJ conceded that although the criteria for the assessment of distinctive character are the same for different types of marks, the relevant public’s perception is not necessarily the same for each category of marks. Therefore, it could be more difficult to establish distinctiveness in relation to certain marks. Nevertheless, the ECJ clarified that an advertising slogan is not required to display "imaginativeness" or a "conceptual tension which would create a surprise and make a striking impression".

The ECJ thus concluded that the CFI had erred in applying these general principles to the mark at issue. The mere fact that VORSPRUNG DURCH TECHNIK could be perceived by the relevant public as a promotional formula and that it was laudatory in nature was insufficient to conclude that the mark was devoid of a distinctive character. According to the ECJ, even a mark with a laudatory connotation may serve as an indication of origin of the goods and services concerned. A mark can have distinctive character even if it is understood at the same time - or even understood primarily - as a promotional formula. With regard to the CFI's findings that the mark VORSPRUNG DURCH TECHNIK could have a number of meanings, constituted a play on words or was perceived as imaginative, surprising and unexpected, the ECJ pointed out that the existence of such characteristics was not a necessary condition for establishing that an advertising slogan has distinctive character. However, the presence of those characteristics likely showed that the advertising slogan at issued had distinctive character. The ECJ thus set aside the decision of the CFI.
The ECJ did not stop there, stating that it could issue a final judgment in this matter, as the state of the proceedings so permitted. It pointed out that 'Vorsprung durch Technik' is a famous slogan, which was registered for goods in Class 12 based on its notoriety in German-speaking regions. It further stated that the fact that the slogan conveyed an objective message did not, on its own, mean that the mark was devoid of distinctive character. The ECJ also stated that VORSPRUNG DURCH TECHNIK had a certain originality or resonance, which made it easy to remember. Furthermore, due to the notoriety of the slogan, the ECJ believed that members of the relevant public were used to associate it with Audi. In other words, the notoriety of the mark for goods in Class 12 made it easier for that public to identify the commercial origin of the goods and/or services covered by the application. The ECJ thus concluded that VORSPRUNG DURCH TECHNIK was sufficiently distinctive and could be registered for all the goods and services claimed by Audi.
The decision is a real surprise. Even though it follows the guidelines set forth by the ECJ in the case involving the slogan 'Das Prinzip der Bequemlichkeit' (for further details please see "ECJ outlines the principles for registrability of advertising slogans"), many subsequent decisions of the ECJ and the CFI on slogans have been less generous and rejected applications on the grounds that the slogan lacked distinctiveness. It seems that, although the guidelines on distinctiveness are well established, there is still room for a few surprises.
The decision represents a major victory for Audi. Following the CFI's decision, it was already clear that the phrase 'Vorsprung durch Technik' was not free for use by competitors. It will be interesting to see the impact of this latest decision on German trademark applications for VORSPRUNG DURCH TECHNIK (and design), SENFT VORSPRUNG DURCH TECHNIK (and design) or BRILLEN-HAMMER VORSPRUNG DURCH TECHNIK, which have been filed since Audi's first application. 
Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg

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