On January 21, 2010, the CJCE issued a favorable decision for the slogan “Vorsprung durch Technik” (i.e “Advancement through technology”) filed as Community word trademark by AUDI AG in 2003 and covering classes 9, 12, 14, 16, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45.
The Examiner, then the Second Board of Appeal and then the Court of First Instance had rejected the mark because it lacked distinctiveness. The CJCE set aside and annulled their previous findings and raised that :
- the minimal level of distinctiveness of slogans cannot rely on “imaginativeness” or “conceptual tension creating surprise and so making a striking impression”;
- the perception of a mark as a promotional formula does not exclude it from distinctiveness as long as the public perceive the sign as an indication of the commercial origin or goods or services;
- characteristics such as having a number of meanings, or constituting a play on words or being perceived as imaginative, surprising or unexpected are likely to endow a slogan filed as trademark with distinctive character.
This CJCE decision may likely be a new start for successfully filling slogans as Community trademarks on the basis of a case by case analysis and provided that the Community case law soften the very strict approach which was applied until now.
By the way, our deep study of the situation as to trademarks and slogans will shortly be featured in a next issue of the WIPO MAGAZIN – watch out for it!