Distinctiveness of an advertising message

Registration of the word mark ‘we’re on it’ was refused. In this context, the CFI provided information on the assessment of the distinctiveness of an advertising message and a slogan. Even a promotional advertising message may be protected as a trade mark – but several interpretations of the slogan are not sufficient for distinctiveness.

It follows from trademark law and case-law that all marks which are otherwise used as advertising messages, slogans, indications of quality or incitements to purchase the goods or services which they designate contain a statement of fact, however simple that statement may be. Nevertheless, such a message must be capable of informing the consumer of the commercial origin of the goods or services in question, and not merely an advertising slogan.

Advertising message as EU trademark – interpretation decisive

It is true that even an advertising message or slogan used as an indication of quality or as an invitation to purchase the goods or services covered by the marks may be expressly protected as a trade mark. Even a laudatory meaning of a word mark does not in principle preclude the advertising message from being protected as a trade mark.

A prerequisite for this is that such a slogan is not just an ordinary advertising message, but must have a certain originality or resonance which requires at least an interpretation by the relevant public, the CJEU has already clarified several times.

When does a slogan require interpretation?

But when does a slogan require interpretation? This interpretation keeps the courts busy, last week also the European Court of Justice (CJEU). The trademark applicant and plaintiff had registered the slogan ‘we’re on it’ for a wide range of goods and services in many Nice classes. The trade mark applied for is original, the plaintiff argued, and it requires an effort of interpretation and triggers a thought process, as it allows several interpretations, such as “we are experts”, “we are specialists”, “we are close”.

Distinctiveness of an advertising message

In assessing the distinctive character of such marks, the Court did not apply stricter criteria than those applied to other signs, the CJEU stated first of all. Nor can it be required for the minimum degree of distinctiveness required that the advertising slogan be “fanciful” and contain a surprise effect, the Court added. The CJEU had already decided the same in its 2015 judgment on the advertising slogan ‘Wet Dust can’t fly’ and granted trademark protection to this word mark, inter alia for cleaning and vacuum cleaners (EU:T:2015:46).

However, if a plaintiff claims that a trade mark applied for has distinctive character, contrary to the assessment made by the EUIPO, he must demonstrate by means of concrete and substantiated information that the trade mark applied for either has inherent distinctiveness or has acquired it through use.

Advertising message is a generally formulated promise

In the present case around the advertising message ‘we’re on it’, the CJEU refused trademark protection. The phrase “we’re on it” meaning “we’ll take care of it” was a banal message, the Court held, a promise formulated in such general terms that it could be used by any supplier or service provider to encourage the purchase of goods or services. That advertising message did not contain any additional distinctive element beyond its obvious promotional meaning.

The CJEU added that the fact that a mark applied for may have several meanings is indeed one of the characteristics which may in principle confer distinctive character on the sign. However, it is not the decisive factor in determining distinctiveness, the CJEU held.

The mark applied for is a promise made in general terms and a common advertising message which applies without distinction to all the goods and services concerned. The Court therefore held that the mark was not capable of identifying the commercial origin of those goods and services and upheld the Board of Appeal’s identical decision.

Moreover, since the disputed advertising message conveys a very broad laudatory message relating to a wide range of goods and services, all those goods and services may be grouped together into a single sufficiently homogeneous group, the Court added. The Board of Appeal was therefore right to give a general statement of reasons without distinguishing between groups of goods and services.

The action was therefore dismissed in its entirety.