With decision dated January 29, 2015 in the proceeding no. T-59/14, the Ninth Chamber of the General Court of Justice of the European Union (hereafter, “the General Court”) decided on the possibility to register an advertising slogan as a trademark.
The case originated from the OHIM’s refusal of the registration of the word sign “INVESTING FOR A NEW WORLD”, in classes 35 (information and analysis relating to economic market data) and 36 (investment management services) of the Nice Classification, due to lack of distinctive character. Such decision was confirmed by the First Board of Appeal and - with the commented decision - by the General Court.
Firstly, the General Court pointed out that the assessment of the distinctive character of compound word signs cannot be limited to an evaluation of each of their words or components, but must be based on the overall perception of those signs by the relevant public.
In the present case, the combination of five common English words in a single sign conveys a clear and unequivocal message, which is immediately apparent and does not require any interpretative effort on the part of an English- speaking consumer.
Accordingly, the General Court considered that the word sign “INVESTING FOR A NEW WORLD”, as a whole, may be easily understood by the relevant public as meaning that the services offered are intended for a new world’s needs.
As the examined slogan does not include any imaginative, surprising or unexpected element capable of conferring distinctive character on it in the mind of the relevant public – being instead an ordinary advertising message – it was considered devoid of distinctive character.
The interesting point of this decision is that – implicitly – the Tribunal considered that advertising slogans can be registered as trademarks, at the condition that they enable the relevant public to perceive them as an indication of the commercial origin of the services at issue.