Who: Blackrock, Inc., (“Applicant”) (1) Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”) (2)
Where: The General Court of the European Union (Ninth Chamber)
When: 29 January 2015
Law stated as at: 29 January 2015
US Corporation Blackrock Inc. had applied to register the Marks “INVESTING FOR A NEW WORLD” and “SO WHAT DO I DO WITH MY MONEY” as European Community Trademark (“CTM”) registrations. This was to cover several financial services in classes 35 and 36. The Court rejected both appeals on the basis that both Marks were “banal” phrases consisting of ordinary words, which were both simply laudatory and descriptive of services in question, and were devoid of distinctive character. However, the mere fact that they were advertising slogans did not in and of itself prevent them from being registered as trademarks.
Blackrock relied heavily on the previous decision in 2010 of the Court in relation to Audi’s “VORSPRUNG DURCH TECHNIK” decision (Case C-398/08 P). That decision examined the basis on which an advertising slogan could or could not be registered as a trademark.
Article 7(1)(b) of the Community Trademark Regulation (207/2009) provides that trademarks which are “devoid of any distinctive character” must not be registered. For a trademark to possess distinctive character, it must serve to identify the goods or services in respect of which registration is applied for, as originating from a particular undertaking, thus distinguishing those goods or services from those of other undertakings. This “distinctive character” must be assessed, first by reference to the goods or services in respective registration has been applied for, and secondly, by reference to the relevant public’s perception of the mark.
As regards advertising slogans, the Audi case clarified that no stricter criteria should be applied to advertising slogans to assess whether they should be registrable as trademarks, than those applicable to other signs. Having said that, it may in practice be more difficult to establish the distinctiveness of advertising slogans. The key issue is the level of creativity and distinctiveness of the slogan. To be registrable as a trademark, an advertising slogan should “possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of the public”.
Blackstone, with varying degrees of credibility, tried to argue in its appeals against rejection of its slogans that “SO WHAT DO I DO WITH MY MONEY” and “INVESTING FOR A NEW WORD” met these tests of creativity. They also argued that the Court had rejected them merely because they were advertising slogans.
The Court’s decision
The Court dismissed the claim that the marks had been rejected merely because they were advertising slogans. The Marks were rejected because they were devoid of distinctive character.
On that issue, it was held that in both cases that the marks were not sufficiently distinctive, even though the “VORSPRUNG DURCH TECHNIK” decision had established that it was not necessary for slogan marks to display “imaginativeness” or even “conceptual tension which would create surprise and so make a striking impression”, in order to be distinctive, the phrases “INVESTING FOR A NEW WORLD” was slightly more distinctive than “SO WHAT DO I DO WITH MY MONEY”, as arguably it had some extra layers of meaning in indicating the ‘new world’ e.g. of the BRIC countries, but there was no getting away from the fact that it simply consisted of words which were unequivocal and did not have any particular semantic depth. They did not constitute a play on words and did not have any imaginative, surprising or unexpected elements which would serve to confer a distinctive character on that phrase in the minds of the relevant public.
Therefore the phrase did not meet the test of distinctiveness.
The Court added that one of the reasons why “VORSPRUNG DURCH TECHNIK” had succeeded was that, in addition to the fact that it inherently had a somewhat more imaginative and surprising element, especially to an English speaking public, its usage over many years had demonstrated that it had indeed become distinctive of Audi’s goods and services in the minds of the relevant public.
Why this matters:
If a business wishes to develop an advertising slogan or catchphrase for the long term, then it is a significant advantage if that phrase is capable of legal protection as a trademark. Clearly, if it can be registered as a trademark, it is much easier to stop others using that phrase or something very similar, preserving the exclusivity and uniqueness of the phrase. Therefore, advertisers and their advisers should consider very carefully whether it is sensible to build a catchphrase or slogan around something that is lacking in distinctive character in trademark terms, and therefore not legally protectable.
If they want to achieve the legal monopoly which a trademark confers, they need to exercise imagination and creativity to ensure that the phrase will be regarded as distinctive.