Audi AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2010-01-21
33. It is clear from settled case‑law that, for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings ( Procter & Gamble  v OHIM , paragraph 32; OHIM v Erpo Möbelwerk , paragraph 42; Case C‑144/06 P Henkel v OHIM [2007] ECR I‑8109, paragraph 34; and Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 66).
34. According to equally settled case‑law, that distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public’s perception of the mark ( Procter & Gamble  v OHIM , paragraph 33; Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 25; Henkel v OHIM , paragraph 35; and Eurohypo v OHIM , paragraph 67).
35. As 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 as such by virtue of such use (see Merz & Krell , paragraph 40, and OHIM v Erpo Möbelwerk , paragraph 41).
36. As regards the assessment of the distinctive character of such marks, the Court has already held that it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign ( OHIM v Erpo Möbelwerk , paragraphs 32 and 44).
37. However, it is apparent from the case‑law that, while the criteria for the assessment of distinctive character are the same for different categories of marks, it may be that, for the purposes of applying those criteria, the relevant public’s perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see Proctor & Gamble v OHIM , paragraph 36; OHIM v Erpo Möbelwerk , paragraph 34; and Henkel v OHIM , paragraphs 36 and 38).
38. While the Court has not excluded the possibility that that case‑law may, in certain circumstances, be relevant to word marks consisting of advertising slogans, it has however stated that difficulties in establishing distinctiveness which may be associated with word marks consisting of advertising slogans because of their very nature – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness as interpreted in the case-law referred to in paragraphs 33 to 34 of the present judgment (see OHIM  v Erpo Möbelwerk , paragraphs 35 and 36).
39. The Court has therefore held, in particular, that 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 ( OHIM  v Erpo Möbelwerk , paragraphs 31 and 32; see also Case C‑392/02 P SAT.1 v OHIM [2004] ECR I‑8317, paragraph 41).
44. However, while it is true – as was pointed out in paragraph 33 of the present judgment – that a mark possesses distinctive character only in so far as it serves to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, it 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 that mark is devoid of distinctive character.
45. On that point, it should be noted that 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.
47. As regards the General Court’s finding in paragraph 41 of the judgment under appeal that the mark Vorsprung durch Technik can have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered, it should be noted that, although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan has distinctive character, as is apparent from paragraph 39 of the present judgment, the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character.