Judgment — ECLI:EU:C:2010:29
Date: 2010-01-21
Language of the case: German
Court formation: First Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Action for annulment - successful;Appeal - successful
Origin: Germany

Summary of the Judgment 1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Marks consisting of advertising slogans (Council Regulation No 40/94, Art. 7(1)(b)) 2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Marks consisting of advertising slogans (Council Regulation No 40/94, Art. 7(1)(b)) 3. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Marks consisting of advertising slogans (Council Regulation No 40/94, Arts 7(1)( b) and (c)) 4. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character (Council Regulation No 40/94, Art. 7(1)(b)) 1. 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 that mark is devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark. The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes 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 both as a promotional formula and as an indication of the commercial origin of goods or 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 – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character. (see paras 44-45) 2. An advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation No 40/94 on the Community trade mark. As regards a mark which can have a number of meanings, or can constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, can be easily remembered, although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan has distinctive character, the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character. (see paras 39, 47) 3. 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 convey by definition, to a greater or lesser extent, an objective message. Those marks are not, by virtue of that fact alone, devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark. Thus, in so far as those marks are not descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94, they can express an objective message, even a simple one, and still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public. (see paras 56-57) 4. The slogan ‘Vorsprung durch Technik’, registration of which is sought for ‘Vehicles; apparatus for locomotion by land, air or water’ in Class 12 of the Nice Agreement together with goods and services in Classes 9, 14, 16, 18, 25, 28, 35 to 43 and 45, is not devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark. Even if it were to be supposed that the slogan ‘Vorsprung durch Technik’ conveys an objective message to the effect that technological superiority enables the manufacture and supply of better goods and services, that fact would not support the conclusion that the mark applied for is devoid of any inherently distinctive character. However simple such a message may be, it cannot be categorised as ordinary to the point of excluding, from the outset and without any further analysis, the possibility that that mark is capable of indicating to the consumer the commercial origin of the goods or services in question. That message does not follow obviously from the slogan in question. 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. Furthermore, that slogan exhibits a certain originality and resonance which makes it easy to remember. Lastly, inasmuch as it is a widely known slogan which has been used by the applicant for many years, it cannot be excluded that the fact that members of the relevant public are used to establishing the link between that slogan and the motor vehicles manufactured by the applicant also makes it easier for that public to identify the commercial origin of the goods or services covered. (see paras 58-59)