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The Best an apple can become – Overview of the registrability of slogans
Slogans continue to enjoy great popularity in the consumer goods industry. Following the groundbreaking judgment of the European Court of Justice on the registrability of “Vorsprung durch Technik” (in English: “progress through technology”) for Audi, numerous applicants have apparently been speculating on a more generous registration practice in Germany and Europe. This became apparent in a recent decision of the Federal Patent Court on the protectability of the slogan “Wir bringen die Zukunft in Serie” (in English: “We bring the future into series”) by VW.1
However, as far as the confectionery and food industries are concerned, most of the proceedings relating to provisional refusals of slogans have been unsuccessful. On the one hand, it may be an issue that everyday products were involved (in contrast to special services for which a slogan such as “ALLE 11 Minuten”, in English: “Every 11 minutes”, was recently considered eligible for protection).2 On the other hand, the largely negative assessment regarding the protectability may result from the fact that the slogans applied for were simply not suitable to overcome the hurdles set by the higher courts:
It is true that the standards for other word signs are also applicable to slogans. A word sequence, for instance, does not need to be imaginative or follow a certain concept provoking an effect of surprise and, therefore, a memorizing effect. However, the public does not necessarily perceive slogans in the same way as other signs. Word sequences which only contain descriptive statements about the goods and services claimed or which are limited to general promotional claims and advertising statements are therefore devoid of distinctive character.
Nevertheless, a slogan can be an indication of origin if it shows, beyond a mere advertising message, a certain originality or conciseness, requiring a minimum of interpretation effort or setting off a cognitive process in the minds of the relevant public. Indicators of distinctiveness are, for example, the brevity or ambiguity of an advertising message.
According to the Board of Appeal of the EUIPO,3 the slogan “Das Beste was ein Apfel werden kann” (in English: “The Best an apple can become”) has a clear meaning for German-speaking consumers in connection with the goods concerned (including fruit drinks, fruit juices and syrups): the statement referred to drinks which contained apples or had an apple flavour and which were particularly good. The composition complied with the rules of syntax and German grammar, which is why the meaning of the statement could be perceived without much thinking or interpretation; the semantic content of the individual words was clear and precise and was not altered in a recognisable way by their combination. The sign conveyed an unambiguous message with a clearly promotional character for the goods claimed. Since it was common practice in advertising to use superlatives (“the best”) to highlight certain products, the consumers would understand the slogan as meaning that the alcoholic and non-alcoholic beverages contained apples or had an apple flavour and were of better quality than the competition.
The common argument that the word order requires interpretation and has several meanings is rejected by the Offices if a sign designates, in at least one of its possible meanings, a characteristic of the goods or services concerned.4 Therefore, the overall impression of the mark applied for did not trigger any cognitive process because of the clearly positive advertising statement.
For similar reasons the Board of Appeal of the EUIPO rejected applications for slogans, although there was only – if at all – a distant connection between the signs and the goods applied for. For example, the board held that the slogan “SHARE KOREAN FLAVOR” could not be protected.5 The public perceived this combination of words as an advertising message or invitation to consume food and beverages with a special Korean taste. The trademark was therefore devoid of any distinctive character and there was no need for a sufficiently direct and specific connection between the sign and the goods applied for.
The EUIPO could not conclude from the words “LOVE FOOD AND PLANET” either, that they were suitable for distinguishing the commercial origin of the goods.6 According to the EUIPO, the expression conveyed no more than the general laudatory message that environmental aspects played an important role in production. The slogan therefore did not reach beyond its banal advertising character.
On similar grounds, “#RETHINK HEALTH” was rejected.7 The public addressed would understand this slogan as an advertising appeal to rethink its own behaviour and to care more about its own health than before. Since the goods applied for had health-promoting properties, there was also a sufficiently direct connection between the goods and the sign. Hashtags were a widespread symbol nowadays, often used for advertising or decorative purposes.
The EUIPO Board of Appeal held that the slogan “DAIRY FREE. AS IT SHOULD BE” for, among others, protein drinks, milk substitutes and non-alcoholic drinks did not have any distinctive character.8 According to a more recent decision, the same applies to the word sequence “THE ARTISAN DRINKS COMPANY” for non-alcoholic drinks.9 The fact that the application “Un gout de fou…jusqu’au bout” for confectionery (in English: “An incredible taste...until the end”) rhymed was not sufficient for the EUIPO Board of Appeal to find that the EU part of the international trademark application had the necessary distinctive character. The EUIPO rather qualified it as a purely promotional statement which did not contain any indication of origin.10
However, marketing strategists must not despair. There are still numerous slogans which are registered without difficulty by the offices in Germany and/or the EU. Examples of class 30 confectionery products include “Kiss the Cook”, “Expedition ins Bierreich” (in English: “Expedition to the Beer Empire”), “MORGEN BEGINNT HEUTE” (“TOMORROW STARTS TODAY”), “Daily Business”, “Licking for Freedom”, “Hero of the Day”, “Queen of Green”, “Sonnenschein im Glas” (in English: “Sunshine in a glass”), “Spießige Früchte” (in English: “Stuffy fruit”), „WONDERFUL WORLD”, “FROHE NASCH NACHT” (in English: “HAPPY NIBBLING NIGHT”), “statt fast food lieber food fasten” (in English: “fasting food instead of fast food”), “SPIRIT OF SUMMER”, “ORGANIC PEACE FOOD”, “ENCHANTED CREAM”, “SCHOOL APPROVED” or “Drawing Smiles”.
Although prior registrations in a search – which must be carried out in any case – may provide valuable information, one must not rely on them. This is because once there has been a provisional refusal or an application for cancellation, neither offices nor courts will be impressed by similar prior registrations as there shall not be any binding effect of earlier decisions.
Dr. Oetker also had to learn about this: The slogan “Qualität ist das beste Rezept” (in English: “quality is the best recipe”) has been registered as a European Union trademark since 2001 for, inter alia, desserts and numerous other goods in Classes 29, 30 and 31. Oetker had been fighting for a long time for the French version of the European Union trademark “La qualité est la meilleure des recettes” for the same and similar goods until the General Court of the European Union (GC) finally refused its registration as a trademark.11
As a general rule, advertising slogans that are clearly promotional for the goods or services claimed will generally not be registered. The more original the slogan is and the more it provokes a thinking process, the higher are the chances of registration and thus monopolisation.
Published in NewsletterConfectionery Industry Special – 2020 edition.
1 Federal Patent Court, Decision of 04/12/2019, 28 (W) 33/18 – Wir bringen die Zukunft in Serie.
2 EUIPO Board of Appeal, Decision of 02/14/2019, R 777/2018-5 – ALLE 11 Minuten.
3 EUIPO Board of Appeal, Decision of 10/07/2019 – Das Beste was ein Apfel werden kann.
4 ECJ, Decision of 10/23/2003, C-191/01 P – Doublemint.
5 EUIPO Board of Appeal, Decision of 30/07/2019, R 496/2019-5 – KOREAN FOOD FLAVOR.
6 EUIPO Board of Appeal, Decision of 22/11/2018, R 1198/2018-2 – E AT FOOD LOVE PLANET.
7 EUIPO Board of Appeal, Decision of 20/03/2019, R 1607/2018-5 – #RETHINK HEALTH.
8 EUIPO Board of Appeal, Decision of 10/30/2018, R 997/2018-2 – DAIRY FREE. AS IT SHOULD BE.
9 EUIPO Board of Appeal, Decision of 10/09/2019, R 869/2019-4 – THE ARTISAN DRINKS COMPANY.
10 EUIPO Board of Appeal, Decision of 07/10/2018, R 285/2018-2 – Un gout de fou… jusqu’au bout.
11 GC, Decision of 02/12/2014, T 570/11 – La qualité est la meilleure des recettes.