{"id":7436,"date":"2022-05-25T14:13:19","date_gmt":"2022-05-25T12:13:19","guid":{"rendered":"http:\/\/registrare-marchio.com\/nuovo\/?p=7436"},"modified":"2022-05-25T14:54:49","modified_gmt":"2022-05-25T12:54:49","slug":"trademarks-consisting-of-slogans-in-the-european-case-law","status":"publish","type":"post","link":"https:\/\/registrare-marchio.com\/en\/trademarks-consisting-of-slogans-in-the-european-case-law\/","title":{"rendered":"Mark consisting of advertising slogans in the EU case-law"},"content":{"rendered":"

The mark consisting of advertising slogans is a registrable trademark<\/strong><\/a> on condition that it has distinctive character, namely \u2013 regardless of its promotional meaning \u2013 on condition that it has something that allows the public to perceive it as an indicator of the commercial origin of the designated goods and\/or services.<\/p>\n

mark cosisting of advertising slogan<\/p>\n

Think Different<\/strong> of Apple or I\u2019m lovin\u2019 it<\/strong>\u00a0of Mc Donalds are examples of marks consisting of advertising slogans.<\/p>\n

With regard to the European Union trademark, article 4 of the European Union trademark regulation n. 2017\/1001 provides that:<\/p>\n

\u201cA EU trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sound\u201d<\/p><\/blockquote>\n

Therefore nothing forbids to register as a trademark an advertising slogan.<\/p>\n

EU case law agrees that:<\/p>\n

\u201cAs regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded by virtue of such use\u201d<\/p><\/blockquote>\n

(EU General Court of 29 January 2015 in Case T-59\/14, paragraph 19, judgement of the Court of Justice of January 21, 2010 in Case C-398\/08, paragraph 35).<\/p>\n

The distinctive character of the marks consisting of advertising slogans should not be valued by applying criteria more restrictive than criteria used for other categories of marks (Case C-398\/08, paragraph 36). In this regard, the Court stated that:<\/p>\n

\u201cDifficulties in establishing distinctiveness which may be associated with word marks consisting of advertising slogans because of their very nature \u2013 difficulties which it is legitimate to take into account \u2013 do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness\u201d<\/p><\/blockquote>\n

(Court of Justice, case C-398\/08, paragraph 38; General Court, Case T-59\/14, paragraph 21).<\/p>\n

First of all, the EU case-law is concerned to give a definition in negative, namely to say which are the requirements that do not necessarily must be present in an advertising slogan in order to be registered as a trademark.<\/p>\n

In detail, judgments in question held that firstly<\/p>\n

\u201cAn advertising slogan cannot be required to display \u201cimaginativeness\u201d or even \u201cconceptual tension which would create surprise\u201d and \u201cso make a striking impression in order to have the minimal level of distinctiveness\u201d<\/p><\/blockquote>\n

(Court of Justice, C-398\/08, paragraph 39; General Court, T-59\/14, paragraph 22)<\/p>\n

In addition, the Court of Justice states that:<\/p>\n

\u201cIt must be held that 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 the mark is devoid of distinctive character\u201d (C-398\/08, paragraph 44)<\/p><\/blockquote>\n

Also, the Court affirms that:<\/p>\n

\u201cit should be noted that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposed of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public as a promotional formula and as an indication of the commercial origin of goods and 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 \u2013 perhaps even primarily understood \u2013 as a promotional formula has no bearing on its distinctive character\u201d(C-398\/08, paragraph 45).<\/p><\/blockquote>\n