A green slogan is not a trademark, says the General Court

The General Court has recently confirmed with decision T-253/22 the refusal of the application for trade mark registration of the verbal sign “Sustainability through Quality”.

Background

German company Groschopp AG Divers & More filed an application for EU trade mark registration of the verbal sign “Sustainability through Quality” in classes 7, 9, 16 and 42. The examiner rejected the application on 23^rd March 2020.

The decision was appealed. The Board of Appeal dismissed the appeal (R 1076/2020-5) on the ground that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation no. 2017/1001. In particular, the Board of Appeal took the view that the sign would be understood by the relevant public as an advertising slogan and not as an indication of the origin of the goods. The Board of Appeal considered that it clearly emerged from the case-law that a formally unusual structure of a slogan such as, for example, humor or unusual alliterations would be a criterion for a finding of distinctive character.

The slogan applied for did not have such characteristics.

In fact, the slogan at issue immediately communicated the fact that sustainability must be achieved through a quality product and reflected a trend to combine sustainability with quality, for example with regard to environment, and therefore with an ecological process, which in this case was clearly intended to be associated with economic considerations.

According to the Board of Appeal, the mark applied for was a promotional and complimentary message which emphasises the positive aspects of the goods and services concerned, namely their sustainability. It therefore also expressed a general and abstract business philosophy.

The applicant appealed the decision to the GC.

The General Court’s decision

The appellant argued that it was clear from the case-law that an advertising slogan has a distinctive character if, in addition to its purely advertising message, it can also be perceived by the target audience as an indication of the commercial origin of the goods and services in question. That could be the case, in particular, where those marks are not reduced to an ordinary advertising message but possess a certain originality and require a minimum effort of interpretation or trigger a cognitive process in the relevant public.

The applicant recalled the slogan “Vorsprung durchTechnik” (advantage through technology) at issue in the decision Audi v OHIM C-398/08 and argued that “Sustainability through Quality” should be considered similarly distinctive, it being irrelevant that individual words such as “sustainability” or “quality” are not in themselves eligible for protection: it is the whole impression of the mark applied for that is decisive.

In the present case, even if the mark applied for contained a message concerning the goods and services indicating, for example, that thanks to the care taken in their manufacture their damage to the climate is limited, this indication would not be obvious. In this respect, the method of construction of the phrase was to be considered unusual. The applicant submitted that if the wording were to be understood in the sense adopted by the Board of Appeal, it should read “sustainability by quality” or “sustainability thanks to quality” and the message should be considered creative and original.

The GC rejected the arguments and stated that it is up to the applicant for a trade mark, who claims that it is distinctive and who has detailed knowledge of the relevant market, to provide concrete and substantiated indications that the trade mark applied for has inherent distinctive character or has acquired such character through use (T-127/06).

In so far as the relevant public pays little attention to a sign which does not immediately give an indication of origin or destination of what it wishes to sell, but rather information which is exclusively promotional and abstract, it will not take the time to seek out the various possible functions of the expression or to memorise it as a trade mark (T-749/18).

The GC therefore concluded that the slogan at issue will be perceived by the relevant public exclusively as a promotional phrase, because of its intrinsic meaning, rather than as an indication of a commercial origin.

Regarding the CJEU decision in Audi v OHIM C‑398/08,  the GC noted that the factual context of the case was substantially different, since the slogan “Vorsprung durch Technik” was considered renowned and had been used for many years by Audi to promote the sale of its motor vehicles in class 12. As such, it could be ruled that the relevant public was accustomed to linking that slogan to the motor vehicles manufactured by that company, thus facilitating the identification by the public of the commercial origin of the goods.

The Court of Justice ruled that the slogan “Vorsprung durch Technik” could have several meanings, constitute a play on words or be perceived as fanciful, surprising and unexpected, and even be memorable and the trade mark had a certain originality and prominence and that an effort of interpretation had been necessary to understand its meaning.

On the contrary, the trade mark applied for in the present case had none of those elements, so that it would not make it possible to identify the commercial origin of the goods and services it covers and would not have distinctive character within the meaning of Article 7(1)(b) of Regulation no. 2017/1001.

Comment

This decision adds to the increasingly relevant debate on greenwashing. The term is a compound word modelled on the verb “whitewash” and can be defined as a market or public relations process by an organisation to give a misleading image of ecological responsibility. Trade marks serve to identify the origin of products and services and may also serve to communicate to the public a “green” message. This information can be in some cases confusing or misleading.

The need to communicate sustainability and respect for the environment has now become a real necessity for companies, but it appears equally important that this communication, understood in a broad sense and therefore including not only ecological statements in advertising, but also trade marks, logos, disclaimers, is compliant and respectful of the rules. Otherwise, a company risks not only being banned from using the slogan or trade mark or the statement deemed unlawful (with obvious impact on, for example, marketing and production plans), but also economic sanctions of no small importance. A company's attention must therefore be constant, and a compliance plan seems appropriate.

This topic has been discussed in a recent conference on “Intellectual Property & Sustainability” as reported by The IPKat.

Photo courtesy of Luisa Callini and Minou.