|All that Vorsprung durch|
Technik -- but still Grumpy
Thursday, 29 January 2015
In yesterday's judgments in Cases T-59/14 ‘INVESTING FOR A NEW WORLD’ and T-609/13 ‘SO WHAT DO I DO WITH MY MONEY’ the General Court of the European Union reviewed the EU case-law on slogan marks, rejecting the appeal of the US-based corporation Blackrock Inc., on the basis that its Community trade mark (CTM) applications were devoid of distinctive character according to Article 7(1)(b) of Regulation 207/2009.
Possibly influenced by the US approach relating to trade marks serving both as source-identifier and for functional purposes, Blackrock applied in 2012 for ‘INVESTING FOR A NEW WORLD’ and ‘SO WHAT DO I DO WITH MY MONEY’ for several financial services in classes 35 and 36. In both cases the examiner found that the CTM applications lacked distinctiveness. The First and Fourth Boards of Appeal respectively dismissed Blackrock's appeals: in their view, both marks consisted of straightforward expressions whose meanings could be clearly understood by the relevant public as they were in close connection with investment/financial services for which protection was sought. Therefore both signs could not be perceived by the relevant public as origin identifiers but solely promotional sentences.
In regard to the relevant public, although in both cases the English-speaking average consumers and professionals were taken into account, in the ‘INVESTING FOR A NEW WORLD’ decision the Board of Appeal stated that the level of attention was ‘relatively high’ given the nature of financial services, while in the ‘SO WHAT DO I DO WITH MY MONEY’ the Board took the view that with reference to promotional formulas the level of attention was ‘relatively low’.
In its appeals to the General Court, Blackrock supported an identical single plea in law that there had been a wrong assessment of its marks’ distinctiveness and a misapplication of the judgment in the Court of Justice of the European Union (CJEU) ruling in VORSPRUNG DURCH TECHNIK (Audi v OHIM, Case C-398/08 P, ECR, EU:C:2010:29), on which it had extensively relied in the OHIM proceedings.
The Court sketched out some preliminary remarks common to both judgments. It recited the settled case-law affirming that a mark has distinctive character if it serves as a source of commercial origin and that distinctiveness must be assessed by reference to the relevant goods and services and to the perception of the relevant public. The Court specified that those two criteria also apply to signs which are slogans for which trade mark protection is sought: such protection is not barred solely because of the advertising use of the signs. In truth, though, for slogan marks the public’s perception is not the same as for other types of marks and, therefore, assessing their distinctiveness results more difficult.
In the light of Audi v OHIM the General Court addressed some typical issues affecting slogan marks. Thus a slogan does not necessarily imply ‘imaginativeness’ or ‘conceptual tension’ directed at providing a striking impression in order to be distinctive; if a mark is perceived as a promotional formula or because of its laudatory meaning it can be used by more than one undertaking it will not sufficiently follow that such mark lack distinctiveness; a slogan mark can simultaneously be inherently distinctive and functionally descriptive for advertising purposes.
Let's now take a look at the specifics of each of Blackrock's appeals:
Case T-609/13 ‘SO WHAT DO I DO WITH MY MONEY’
Provided that the low level of attention of the relevant public had been already established by the Board of Appeal, the Court considered that SO WHAT DO I DO WITH MY MONEY could be easily understood, in that it comprised English words related to the financial services covered by the CTM application and arranged according the English grammar rules. The slogan’s clear message would induce the relevant public to reflect on whether it was using its money effectively. Moreover, the expression contained in the sign was laudatory and promotional of Blackrock’s services, as it could lead to the conclusion that the applicant could capably answer that question. The slogan had no semantic depth which could offset the clear close link between the sign and the relevant financial services. Contrary to what Blackrock stated, the Court did not find any multiple meanings of the slogan, nor did Blackrock provide any. In any event, even if the slogan had several meanings it that didn't mean that it was distinctive. Finally, said the Court, neither its interrogative form nor the open-ended nature of the implied question could help give it any distinctiveness.
Did the Board of Appeal misapply the CJEU's ruling in Audi v OHIM? No, said the Court: Blackrock misunderstood its test for distinctiveness: since the German slogan VORSPRUNG DURCH TECHNIK could have different meanings beyond the literal meaning of "advance or advantage through technology", or could constitute a play on words or could be perceived as imaginative, it was both easy to remember and distinctive. That was not the case for 'SO WHAT DO I DO WITH MY MONEY’.The Court specified that the Board of Appeal did not reject the CTM application solely because of its laudatory nature but also because it could not serve as origin identifier. Nothing was wrong with the Board of Appeal's test of distinctiveness: when the relevant public would think of a service provider named 'SO WHAT DO I DO WITH MY MONEY’, while looking at the mark, it wouldn't think it was being informed about the commercial source of the services for which CTM registration was sought.
Case T-59/14 ‘INVESTING FOR A NEW WORLD’
The Court did not accept the Board of Appeal’s conclusion that the relevant public’s level of attention was ‘relatively high’. While that public included professionals and registration was sought for financial services, the relevant public's attention was low when slogans are concerned.
Examining the Board of Appeal’s assessment of the mark’s meaning, the Court pointed out that ‘INVESTING FOR A NEW WORLD’ is a combination of common English words which respect the rules of English grammar. It followed that the CTM application conveyed a clear the meaning that “the services offered are intended for a new world’s needs”, and, therefore it expressed a positive and laudatory message with reference to the relevant services. Moreover, a close link between the sign and the financial services covered by the CTM application was apparent, depriving the mark of any semantic depth, word-play or surprising or unexpected elements which could confer due distinctiveness. Finally, in relation to the applicant’s argument that the CTM application had multiple meanings, the Court specified that this circumstance is not decisive to affirm its distinctiveness and that the several possible interpretations of the mark did not change its laudatory nature. Indeed, if at least one of the trade mark application’s possible meanings expresses the goods’ and services’ characteristics, its registration must be rejected.
Moving on to the judgment in VORSPRUNG DURCH TECHNIK, the Court held that the Board of Appeal had correctly rejected the CTM application because it could not be deployed as origin identifier beyond being a promotional formula. The Board of Appeal was also right in simply clarifying that, in Audi v OHIM the distinctiveness of Audi’s slogan mark had been affirmed, given that the sign was a widely known slogan, having been used for many years, and could also lead consumers to identify the commercial origin of the advertised motor vehicles. In contrast, such long-standing presence in the market for the Blackrock slogan's reputation was not proved in the present case.
So what do readers think about the distinctiveness-functional descriptiveness dichotomy for advertising purposes?