No Trade Mark Protection for Advertising Slogan "Performance through Passion"

According to a judgment of the Court of Justice of the European Union (EuG) of 25.03.2014 (Az. T 539/11), an advertising slogan lacks the distinctive character required for registration as a trade mark if it is not capable, from any point of view, of providing the consumers confronted with it with an indication of the origin of the goods and services in question, but is merely understood as advertising puffery. When assessing distinctive character, the duration of use and reputation of the advertising slogan must be taken into account.

Deutsche Bank has been using the advertising slogan "Leistung aus Leidenschaft" for many years and registered this in 2010 as Community word mark inter alia for the services financial and insurance services as well as telecommunications in classes 35, 36, 38 with the OHIM. The OHIM rejected the application on the grounds that the advertising slogan lacked any distinctive character whatsoever, because it consisted exclusively of slogan-like advertising puffery and would therefore not be understood as an indication of origin. The applicant for registration opposed this by bringing an action before the EuG.

The Court's Decision

The Court first examined the matter from the perspective of a defect in reasoning and a violation of the principle of equal treatment, both of which were ultimately rejected. On the question of distinctive character, the Court took the view that the slogan "Leistung aus Leidenschaft" was limited to conveying the impression of a particularly high-quality service provided by the undertaking. It was therefore to be understood as mere advertising puffery and would be perceived accordingly by the consumers addressed. There were no apparent features beyond this which would allow a conclusion as to the commercial origin of the advertised service.

This was not changed by the fact that the applicant had been using the advertising slogan intensively for many years, because this had not led to a reputation and an unambiguous connection to the source, as had been the case in the "Vorsprung durch Technik" (Audi) decision. Unlike in that case, there was not a famous mark here which, from the perspective of consumers, was inseparably linked to Deutsche Bank.

Conclusion

The registration of advertising slogans is always a risky undertaking, but always worth attempting. As numerous decisions show, the outcome is hardly foreseeable beforehand and registrations occur time and again that one would not have expected. The principle applies that registration becomes more likely the more intensively the advertising slogan has been used and the better known it is. The same applies to atypical and particularly creative formulations that stand out clearly from ordinary advertising puffery.