With more brand owners registering ad slogans as trade marks, the European Court of Justice has looked at whether they should be more difficult to register than single word brands.
Who: Erpo Mobile Mobelwerk GmbH
Where: The European Court of Justice
When: Autumn 2004
Furniture brand Erpo applied to register "Das Prinzip der Bequemlichkeit" (the "Comfort Principle") as a community trademark ("CTM") in classes 8 (cutlery, hand tools and implements), 12 (vehicles) and 20 (furniture). The CTM Examiner refused the applications in classes 12 and 20. The Examiner said this was because slogans like this were partly an incitement to buy and also said something positive about the product.
This meant, the Examiner said, that to pass the "distinctiveness" test and be capable of registration as a trade mark, such a strap line had to have an additional element of originality or imagination to be registrable in classes 12 and 20. Otherwise it would be potentially too descriptive/laudatory of the product it was used to sell for any one business to have a monopoly on it.
This seemed to Erpo like making the rules up as the Examiner went along and a departure from the established requirements for registration. Erpo appealed to the Board of Appeal, but they agreed with the Examiner. Undaunted, Erpo took the case to the European Court of First Instance. The EFI agreed with Erpo and said the registration could proceed in classes 12 and 20 as well as 8, but the game was not up yet. The CTM Registry took the case to the European Court of Justice.
But the ECJ agreed with Erpo and rejected the Board's appeal.
No extra hurdle for slogans
The ECJ said that simply because slogans could be used as incitements to purchase or indications of quality and as such might be viewed differently to ordinary trademarks and logos by the public, did not mean that stricter rules should be applied as to registrability.
The registration rules are the same for all brands: is the trade mark capable of identifying a product as originating from a particular undertaking and thus distinguishing it from those of other undertakings?
The proper approach to deciding whether this slogan was capable of registration was to assess distinctiveness, first in relation to the goods and services for which registration was applied for and secondly in relation to the perception of them by the relevant public, consisting of average consumers of the product or service who are reasonably well informed and reasonably observant and circumspect.
Why this matters:
Slogans and straplines are increasingly the object of trademark registration applications. In this case it is emphasised that there are no special rules for establishing whether they qualify for registration.
The other side of the equation is that all advertisers using creative end lines or slogans, even on a one-off basis, must take care of the possibility of infringing a third party's trademark and conduct proper pre-emptive searches accordingly.