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For businesses looking to protect their brand, the registration of trade marks is an obvious and effective method: it gives the holder the exclusive right to use the mark, it makes marks commercially exploitable through licensing arrangements, deters infringers and may be renewed indefinitely. However, several recent cases have altered the approach of the courts as to whether shapes and slogans can be registered as trade marks. Businesses should learn from these cases and bear them in mind when deciding how to protect their brands.
SLOGANS AS TRADE MARKS
Audi AG v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) Case C-398/08 P, 21 January 2010.
Executive summary
Audi applied in 2003 to register their slogan, 'Vorsprung durch Technik' ('Progress through Technology'), as a European Community trade mark for a wide range of goods and services, including 'vehicles and apparatus for locomotion by land' in Class 12. This was refused initially and also on appeal on the grounds that it lacked distinctive character, one of the requirements of the European Regulation 40/94, Article 7 (replaced as of 13 April 2009 by consolidated Regul-ation 2009/207/EC). The exception was in respect of Class 12 where it was held that the mark had acquired 'distinctive character' through use. The European Court of Justice (the ECJ), however, took a different view and held that the slogan could be registered as a trade mark for all Classes applied for. In reaching this decision, the ECJ has taken a pro-brand owner stance, which will be of comfort to businesses considering registration of their slogans.
Bars to registration
To be capable of being registered, trade marks must be distinctive, capable of graphic representation, capable of distinguishing goods or services (that is, indicative of their origin) and not be excluded by statute. This case turned on the requirement of distinctiveness.
The ECJ has indicated in the past that a slogan mark may not be registered where it serves a promotional function, for example, by commending the quality of the product, rather than operating as a trade mark to guarantee the origin of the product. This applies unless the mark can acquire distinctiveness through use (