No talking, just DO IT?

Comedian Mario Barth defended himself before the Regional Court (LG) Düsseldorf against the use of the slogan "No talking, just DO IT!". Like with the slogan "Nothing rhymes with Uschi", he is of the opinion that he has the right to prohibit the commercial use of these catchphrases.

German comedian Mario Barth sells merchandise items, in particular T-shirts bearing a catchphrase from one of his sketches titled "No talking, just DO IT!". The comedian also had this title registered as a trade mark with the Trade Mark Office.

The opponent distributes printed T-shirts with various motifs via its website and via internet platforms such as eBay and Amazon, including famous sayings from film and television, including a T-shirt with the imprint "No talking, just DO IT!". The T-shirts were offered on the sales portal Amazon in such a manner that when the search term "Mario Barth Fanartikel" or "Mario Barth T-Shirt" was entered, they appeared in the first or second place in the search results list. Mario Barth considered this to be anti-competitive and sued the T-shirt seller.

Court Decision
In its decision of 27.07.2011 – Az. 2a O 72/11 the Regional Court (LG) Düsseldorf made clear that the slogan "No talking, just DO IT" constitutes a general piece of wisdom belonging to the public domain, which was already present in German language usage before being used by the comedian. The court rejected the claim of commercial distinctiveness of the slogan, as such distinctiveness only exists if the concrete design or specific features of the product are suitable to indicate to the relevant circles of trade its commercial origin or its special qualities. This was not the case here.

Consequently, the distribution of T-shirts bearing the slogan "No talking, just DO IT" by the T-shirt manufacturer did not constitute unfair imitation of Mario Barth's merchandise products. The comedian's action had to be dismissed.

Conclusion

Mario Barth continues to attempt to protect catchphrases used in his shows by means of trade mark and competition law and to prohibit others from using them commercially. Insofar as the slogans do not originate from him at all and/or are part of the public domain, he will not succeed in this endeavour. Moreover, a revocation proceeding is pending against the trade mark registered by the comedian before the Trade Mark Office.