The Federal Court of Justice decided on the distinctiveness of long slogans and held that, in general, the relevant public did not perceive long slogans as an indication of origin.
Wiebold-Confiserie GmbH & Co (Wiebold) manufactures pralines. It applied for the registration of the following slogan in classes 30, 35 and 42:
"Die Vision: EINZIGARTIGES ENGAGEMENT IN TRÜFFELPRALINEN // Der Sinn: Jeder weiß WAS wann zu tun ist und was NICHT zu tun ist // Der Nutzen: Alle tun das RICHTIGE zur richtigen Zeit"
["The Vision: UNIQUE EFFORT IN CHOCOLATE TRUFFLES // The Spirit: everybody knows WHAT to do when and what NOT to do // The Purpose: everybody does the RIGHT thing at the right time"]
Both the German Patent and Trademark Office and the Federal Patent Court found the slogan to be devoid of any distinctive character and therefore refused the registration.
The Federal Court of Justice said that, in general, the requirement of distinctiveness of a sign shall be interpreted extensively. Therefore, the absolute ground for refusal in § 8 Sec. 2 No. 1 of the German Trademark Act - lack of distinctiveness - could be overcome easily by any degree of distinctiveness. Important criteria for the distinctiveness of a sign were brevity, conciseness and originality. The court held that these criteria also applied for slogans. Therefore, a slogan could be protected as a trademark if it was both descriptive of the goods and services for which protection was sought and somehow distinctive.
However, the distinctiveness of a slogan could not be assumed because it consisted of an unusual order of words which the relevant public potentially perceived as such.
The court rejected Wiebold's argument that the relevant public would perceive the slogan as an indication of origin once it got used to it by saying that the public was not used to perceiving long slogans as an indication of origin. A possible future habituation was of no relevance.
The court emphasized its critical view on the protection of long slogans. Although the criteria for the assessment of the distinctiveness of a sign did not depend on the particular type of the sign, the perception of the public with regard to distinctiveness might do. As the relevant public perceived slogans differently, the distinctiveness of a slogan must be assessed on a case-by-case basis. The court said that, in general, the relevant public did not perceive long slogans as an indication of origin. Therefore, in general, long slogans lack distinctiveness. As a result, the Federal Court of Justice confirmed the decisions.
In consequence of this decision, the registration of long slogans as trademarks remains unsure. Therefore, it might be advisable to apply for the registration of both the whole slogan and also its main elements.