Is an advertising slogan capable of being registered as a trade mark?

Advertisers are often faced with the difficult task of having to create creative distinctive signs with high recognition value for their clients. In doing so, they must regularly ensure that the distinctive signs and advertising slogans they create are also capable of being registered as trade marks. The Federal Patent Court (Bundespatentgericht) had to decide in such a case whether the advertising slogan "Lovely Moments" created by an advertising agency could be registered as a trade mark.

A company attempted to register the distinctive sign "Lovely Moments" in classes 3, 4 and 30. However, the Trade Mark Office refused registration of the mark on the grounds of lack of distinctive character, since the relevant public circles perceived the designation "Lovely Moments" as a mere advertising statement or recommendation of a general nature, which could not be attributed to specific goods and services.

Against this, the applicant appealed to the Federal Patent Court (Bundespatentgericht). In its view, the trade mark to be registered was not descriptive for the goods in the registered classes, which would be sufficient for distinctive character.

Court's Decision

By Decision of 06.09.2011 – Az. 24 W (pat) 503/10 the Federal Patent Court (Bundespatentgericht) confirmed the legal assessment of the Trade Mark Office and rejected the applicant's appeal.

According to established case law, trade mark distinctive character is the concrete suitability of a mark to indicate the origin of the claimed goods and services from a particular undertaking and thus to distinguish those goods and services from those of other undertakings. Generic words or phrases in German or a common foreign language lack distinctive character if they are understood only as such in their original meaning and do not contain any statement regarding the commercial origin of the goods and services claimed for a trade mark that goes beyond mere word comprehension.

A non-descriptive sign may indeed be distinctive even if the public perceives it simultaneously or primarily as an advertising medium. However, an advertising slogan must also fulfil the trade mark function of indicating origin if it is to be registered as a trade mark in the register. Customary advertising statements or advertising slogans of a general nature, however, lack this distinctive character.

The registered distinctive sign "Lovely Moments" is to be classified as a simple advertising slogan, which is suited exclusively to draw the attention of the relevant public to the claimed goods as such. However, the sequence of words "Lovely Moments" does not contain any indication of the specific undertaking of origin of these goods as distinguished from all other undertakings of origin of identical goods.

Conclusion

The advertising industry should check the registrability of marks when creating distinctive signs. It should be ensured that the proposed distinctive signs are not purely descriptive and also fulfil the trade mark function of indicating origin. In addition, pre-existing similar or identical marks can be readily researched in order to avoid later conflicts.