WET DUST CAN’T FLY case: slogans have a future as CTMs

European Union

A recurring problem in connection with Community trademarks (CTMs) is the issue of the registrability of slogans or other laudatory advertising statements. In Pro-Aqua International GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-133/13, January 22 2015), the General Court added interesting criteria in this respect.

Rexair LLC obtained a registration for the mark WET DUST CAN’T FLY (CTM No 6668073) in Classes 3, 7 and 37 of the Nice Classification. The registration was subsequently contested by Pro-Aqua International GmbH by means of an application for a declaration of invalidity on the basis of Articles 7(1)(b) and (c) of the Community Trademark Regulation (207/2009). This application was rejected by the Cancellation Division of OHIM and this decision was confirmed by the Second Board of Appeal of OHIM. On appeal, the General Court also confirmed the decision of the Second Board of Appeal.

The first issue the General Court had to deal with was the alleged descriptiveness of the mark. Interestingly, all instances - including the General Court - found that the mark was not descriptive. For the mark to be found descriptive, there should be “a sufficiently direct and specific relationship between the sign and the goods and services in question” (Paragraph 17). In the opinion of the court, this lack of descriptiveness resulted from the fact that 'wet dust' does not exist, because once dust is moistened and becomes wet, it is no longer dust. Moreover, in connection with the goods in Class 3, the court held that these products were not designed to moisten dust in order to prevent it from dispersing, but just to clean carpets, flooring, upholstery and the like.

Further, the court did not accept the argument that vacuum cleaners in Class 7 use or may use liquid components because, from a technical standpoint, the liquids in the vacuum cleaner serve to filter the dust, “but are not designed to dampen the dust in order to prevent it from flying” (Paragraph 27).

The arguments of the applicant relating to consumers who do not understand English were considered to be irrelevant, because the words making up the trademark were commonly used English words which would be understood even by consumers whose mother tongue is not English.

The court also rejected the applicant's third argument - namely, that the registration of this trademark would make it impossible to explain the functionalities of its own cleaning machines. The court concluded that the expression 'wet dust can’t fly’ “cannot be understood as a conventional way of describing the functionality of cleaning appliances and cleaning tools” (Paragraph 33), so there was no need to ensure that that expression remained available for use by competitors.

The applicant's second plea under Article 7(1)(b) (lack of distinctive character) was also rejected. Based on prior judgments (Audi v OHIM (Case C-398/08 P), Smart Technologies v OHIM (Case C-311/11 P) and Oetker Nahrungsmittel v OHIM ('La qualité est la meilleure des recettes') (Case T-570/11)), the court confirmed that an advertising slogan cannot be required to display imaginativeness or even conceptual tension which would create surprise and so make a striking impression in order to have distinctive character. Moreover, the court held that the fact that a trademark is of laudatory nature, and is understood by the public as a promotional formula, does not, in itself, exclude the conclusion that the mark can be perceived by the public as an indication of commercial origin. The trademark WET DUST CAN’T FLY will not enable the public to associate this expression with the relevant goods and services without an interpretative effort.

Finally, the applicant had argued that the mark would indicate that the performance of the products covered by the mark would be better than the performance of other products. The court admitted that the contested trademark could be considered as slightly suggestive, but that no evidence was submitted to demonstrate the assumption that the goods and services bearing the contested trademark would be superior.

The action was thus dismissed.

In future cases, it will be important to bear in mind the final conclusion of the court in this case (Paragraph 53) - namely, that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purpose of guaranteeing to consumers the origin of the goods or services which it covers.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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