1. Office for Harmonization in the Internal Market (Trade Marks and Designs) WWW.OAMI.EUROPA.EU Slogans Department of Industrial Property Policy (OHIM) Liaison meeting – 10/11 June 2010

2. Office for Harmonization in the Internal Market (Trade Marks and Designs) OHIM Manual: Acceptable Slogans 7.3.6. Slogans A slogan is always registrable if it contains a word which is distinctive on its own. Carlsberg –Carlsberg – Probably the Best Beer in the World COKE –THE COKE SIDE OF LIFE Kit Kat –Have a break….have a Kit Kat Toyota –Today. Tomorrow. Toyota Mahou –Te mereces una Mahou (You deserve a Mahou)

3. Office for Harmonization in the Internal Market (Trade Marks and Designs) OHIM Manual: Acceptable Slogans 7.3.6. Slogans Slogans are acceptable if they contain a fanciful element such as WORDPLAY: Your Search Ends Hear (Classes 9, 38), IRONY: Reassuringly Expensive (Class 32) RHYME: Dont dream it, drive it (Class 12), ALLITERATION or SUBLIMINAL MESSAGES If your parents did it, how cool can it be?

4. Office for Harmonization in the Internal Market (Trade Marks and Designs) OHIM Manual: Descriptive Slogans 7.3.6 Descriptive slogans A slogan can be descriptive if it is limited to highlight desirable aspects of the G&S. Examples: LOOKS LIKE GRASS… FEELS LIKE GRASS… PLAYS LIKE GRASS… (GC T-216/02)

5. Office for Harmonization in the Internal Market (Trade Marks and Designs) OHIM Manual: Non distinctive slogans 7.3.6. Non distinctive slogans Slogans which are limited to general invitations to buy, laudatory statements: DAS GESUNDE PLUS (The healthy plus) (Classes 3, 5 and 30) R1713/2008-4, statements promoting the superior knowledge: We Know Insurance (Class 36), client friendliness: What You Need When You Need It (Class 9) R0616/2009-2. Considerez votre probleme resolu (Class 36) R0872/2006-2, economic success or Availability: Two Days A Week (Class 41) R0943/2004-4, are non-distinctive.

6. Office for Harmonization in the Internal Market (Trade Marks and Designs) C-398/08P « Vorsprung durch Technik » 21 January 2010 Vorsprung durch Technik for G&S in Classes 9, 12, 14, 16, 18, 25, 28, 35 to 43 and 45. Partly rejected on the basis of Article 7(1)(b) and (c) CTMR. R0237/2005-2, the BoA partly upheld the appeal and annulled the decision in relation to the goods in Class 12. Appeal before General Court (GC) case T-70/06 The GC dismissed the appeal The applicant appealed before the Court of Justice (CJ), case C- 398/08P The CJ upheld the appeal and considered that the GC wrongly interpreted Article 7(1)(b) CTMR. C-398/08P « Vorsprung durch Technik »

7. Office for Harmonization in the Internal Market (Trade Marks and Designs) C-398/08P « Vorsprung durch Technik » It is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of signs In so far as the public perceives the mark as an indication of origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character.

8. Office for Harmonization in the Internal Market (Trade Marks and Designs) C-398/08P « Vorsprung durch Technik » The CJ stated that in so far as the marks made up of signs or indications that are also used as advertising slogans are not descriptive, they can express an objective message, even a simple one, and still be capable of indicating to the consumer the commercial origin of the G&S. The combination of words Vorsprung durch Technik (meaning, inter alia, advance or advantage through technology) suggests, at first glance, only a causal link and accordingly requires a measure of interpretation on the part of the public. The slogan exhibits a certain originality and resonance which makes it easy to remember.

9. Office for Harmonization in the Internal Market (Trade Marks and Designs) Office practice seems not to be in line with the Judgment: Slogans are considered to be non-distinctive if they are limited to general invitations, laudatory statements and messages to promote superior knowledge of the applicant. Only if they contain a fanciful element, for example by playing with words, by alliteration and rhyme, or by conveying subliminal messages, slogans are considered to be distinctive. C-398/08P « Vorsprung durch Technik »

10. Office for Harmonization in the Internal Market (Trade Marks and Designs) C-398/08P « Vorsprung durch Technik » Test proposed by CJ in Vorsprung durch Technik 1. If an objective message, even a simple one, suggests, at first glance, only a causal link and accordingly requires a measure of interpretation on the part of the public, it is capable of indicating to the consumer the commercial origin of the goods in question, that is, it is inherently distinctive. 2.As a second step, the Court evaluates whether the slogan has a certain originality and resonance which makes it easy to remember.

11. Office for Harmonization in the Internal Market (Trade Marks and Designs) WWW.OAMI.EUROPA.EU Thank you for your attention!