WE WILL ROCK YOU is not descriptive, says Supreme Court

In MCP Sound & Media v WWRY Musical GmbH & Co KG (17 Ob 15/07s, August 7 2007), the Supreme Court has overturned a decision of the Vienna Higher Regional Court and held that the Community trademark WE WILL ROCK YOU is valid.

The plaintiffs, WWRY Musical GmbH & Co KG and Queen Productions Ltd, owned the word mark WE WILL ROCK YOU (Registration 2606150) and the corresponding figurative mark (Registration 2591592). They filed an action seeking to enjoin Austrian company MCP Sound & Media from using similar signs in the course of business. MCP Sound counterclaimed that the trademarks were descriptive under Article 7(1)(c) of the Community Trademark Regulation (40/94/EC) and devoid of distinctive character under Article (7)(1)(b). Both trademarks had been registered by the Office of Harmonization for the Internal Market without any difficulties for goods and services in Classes 9, 16, 21, 25, 26 and 41 of the Nice Classification (figurative mark) and in Classes 9, 25, and 41 (word mark).

The Vienna Commercial Court upheld both trademarks and rejected the counterclaim. However, the Vienna Court of Appeals held that the two trademarks were descriptive of certain goods in Class 9 (eg, magnetic data carriers and recording discs) and services in Class 41 (eg, entertainment, live entertainment and production of radio and television programmes), but not of the other goods and services covered by the marks. Therefore, it declared that the trademarks were partially invalid in respect of these goods and services.

The Supreme Court restored the decision of the Vienna Commercial Court and dismissed the counterclaim in its entirety.

With regard to the issue of descriptiveness, the Supreme Court pointed out that the absolute grounds of refusal apply only where the sign:

• consists exclusively of descriptive terms; and
  
  
• consists of everyday words which form a linguistically correct statement.

The fact that a word has multiple meanings is insufficient to prove that a sign is not descriptive if at least one of these meanings is descriptive. The same criteria apply to advertising slogans. Therefore, according to the court, WE WILL ROCK YOU is not descriptive because it does not:

• contain a statement on the kind, quality, quantity, destination, value, geographical origin or time of production of the goods or services at issue;
  
  
• designate certain features of the goods and services which are generally attributed to such goods or services (eg, their purpose, price, quality, get-up and size).

Further, the court added that the absolute grounds of refusal apply only to signs which are able to designate a group of goods or services, in that these goods or services share a common characteristic. According to the court, these signs must remain in the public domain so that third parties can use them to designate certain characteristics of their own goods. The trademark WE WILL ROCK YOU did not fall within that category of signs.

Although the argument that the trademarks were unregistrable under Article (7)(1)(b) of the regulation was not brought before the Supreme Court, the court nevertheless confirmed that the marks were not devoid of distinctive character under Article (7)(1)(b).

Interestingly, pursuant to the regulation Austria had designated the Vienna Commercial Court as Community trademark court of first instance and the Vienna Court of Appeals as Community trademark court of second instance, but never designated the Supreme Court as a Community trademark court. In spite of this, and in compliance with the Civil Procedure Code, the Supreme Court has again rendered a decision on the validity of a Community trademark.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna