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Thursday, 21 January 2010

Vorsprung durch Rechtsstreit as Audi gets its CTM

While the average Audi can put on a neat turn of speed, few would have expected it to take seven years to get from Alicante to Luxembourg. But that's exactly what happened in Case C-398/08 P Audi AG v Office for Harmonisation in the Internal Market, today's ruling of the Court of Justice of the European Union. What took so long?

Right: an early phase of Vorsprung durch Technik, as designers work on the first Audi

In January 2003 car-maker Audi applied to register the word mark Vorsprung durch Technik ("Progress Through Technology") as a Community trade mark for a large range of goods and services in Classes 9, 12, 14, 16, 18, 25, 28, 35 to 43 and 45. The examiner refused the application for most things, saying that the words Vorsprung durch Technik were lacking in distinctive character. He accepted that, regarding'vehicles; apparatus for locomotion by land, air or water’ in Class 12, Vorsprung durch Technik was distinctive for vehicles and their components, but that no new evidence was adduced as to their distinctive character in respect to other goods in that class.

The Second Board of Appeal upheld Audi’s appeal in respect of the goods in Class 12, but dismissed the appeal in relation to all the other goods and services. According to the Board of Appeal nearly all the goods and services related, even if only remotely, to technology -- which even plays an important role in the clothing sector. A manufacturer of such goods whose technology is advanced has a great advantage as compared with competing businesses and the slogan ‘Vorsprung durch Technik’ conveys an objective message to the effect that technological superiority enables better goods and services to be manufactured and supplied. Since, apart from the goods in Class 12, Audi provided no evidence that the slogan ‘Vorsprung durch Technik’ has become a trade mark in the minds of the public, the application must be refused in so far as it relates to goods and services in other classes.

The Court of First Instance (as it was then known) dismissed Audi’s appeal. In its view, although the contested decision did not actually contain a ‘differentiated assessment’ for all the goods and services in all the classes covered by Audi’s application, it still contained an analysis of the relevant public’s perception of that mark in relation to the goods and services which it covers. The public would perceive the expression ‘Vorsprung durch Technik’ as a slogan containing an objective laudatory message, despite the varying levels of technical sophistication of the respective goods and services (these include decorations for Christmas trees, the Kat notes).

The court further held that, while Vorsprung durch Technik can have a number of meanings, or constitute a play on words, or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered, this nevertheless does not mean that it is distinctive. Those various elements would make that mark distinctive only if the mark were perceived immediately by the relevant public as an indication of the commercial origin of the goods and services which it covers. In the case before it, the relevant public would in practice perceive that mark, first and foremost, as a promotional formula. Given the broad range of meanings attributable to the notion of ‘Technik’ in German, the reference to that notion would not, for all the goods and services covered, confer distinctive character on the mark applied for. Secondly, the German word ‘Vorsprung’ (meaning, inter alia, ‘advance’ or ‘advantage’) is, particularly for the German-speaking public, primarily laudatory in nature. Thirdly, the mark was addressed to a wide public and the majority of undertakings wishing to provide goods and services to that wide public might well, in view of the laudatory character of that expression, use it themselves, regardless of how it ought to be interpreted.

Audi then appealed further to the Court of Justice, which took a more sympathetic view, set aside the court's decision and annulled that of the Board of Appeal, in so far as those decisions refused Audi’s application for registration. According to the Court of Justice:
* Difficulties in establishing distinctiveness which may be associated with word marks consisting of advertising slogans do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness as interpreted in the case-law of the Court of Justice, which has held 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 the minimal level of distinctive character.
* The mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character. A mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character.
* The Court of First Instance did not substantiate its finding to the effect that the mark applied for will not be perceived by the relevant public as an indication of the commercial origin of the goods and services in question; the court found that Vorsprung durch Technik can have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered. Although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan has distinctive character, the presence of those characteristics is likely to endow that mark with distinctive character.
The IPKat thinks the Court has got it just right, but is (as ever) saddened at the length of time it takes to get from application to final ruling. Merpel says, I just can't wait to see Vorsprung durch Technik used as a trade mark on paint-brushes, whips, animal skins and adhesives for stationery and household purposes; it will so enhance the brand value.

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