Smart Technologies Ruling: The European Court of Justice revises its Jurisprudence regarding the use of commercial slogans as trademarks
The CJUE, in his ruling of 12th July on the Smart technologies Case has revised its doctrine on the use of commercial slogans as trademarks.
In the cited ruling, Smart technologies appealed the decision of the General Court of upholding the resolution of the second board of appeals of the OHIM in which the registration of the denominative expression “WIR MACHEN DAS BESONDERE EINFACH” (we make special –things- simple) was refused.
The CJUE takes advantage of this appeal in order to recall some already established principles on the use of commercial slogans as trademarks, and add some additional criteria to some of them; in the ruling, The Court comes to the following conclusions:
Regarding the possibility that a slogan is considered per se as a trademark, the Court brings on the table, and confirms, already cited criteria (AUDI/OHIM Ruling) meaning that the mere fact that a slogan is used as such, including a laudatory connotation-which is the core feature of a slogan- doesn’t preclude that the given slogan may be used at the same time as an indication of the commercial origin of goods or services. Therefore, the relevant public may simultaneously perceive the slogan as both a commercial message and an indication of origin. This simultaneity has no repercussion on the distinctiveness of the trademark.
Concerning the classification of the slogans, the Tribunal denies these might constitute a special subcategory or even a separate one from that of other word marks. On the contrary, slogans are nothing else but denominative signs with a laudatory connotation. In this sense, and as the ruling points out, there is no possibility-when determining their distinctiveness, to apply to slogans harsher criteria than those used for other signs; however, it is possible that given the circumstances in a specific case, it might be more difficult to notice that distinctiveness (as happens with other non-traditional trademarks, such as 3 D trademarks).
Last but not least, the Court makes a very interesting observation linked to the requirement of the distinctiveness of a trademark; in this context it is denied that the level of specialization of the target public- being this above the average- may but itself allow the registration of trademarks that doesn’t reach the minimum level of distinctiveness generally demanded. On the contrary, the attentiveness of the relevant public is only one of the several criteria to be assessed since distinctiveness has to be measured taking into account an overall impression.
Related Posts:
- Judgement of the General Court “Beatle”: the Court did not let it be
- The General Court of the European Union denies registration of word mark ESPETEC as CTM
- Jugdement of Audiencia Provincial de Alicante of 12 January 2012, “Omega”
- Jugdement of the General Court on “3D eXam”: the extension of protection of international trademarks