Slogan under trademark protection - only with subtle element

Achieving trademark protection for a slogan is difficult, but possible. The trade mark registration for the word mark “See More. Reach More. Treat More.” for medical devices was rejected by the European Court, but granted for the word mark “WET DUST CAN’T FLY” for cleaning and vacuum cleaner. A subtle element in the advertising message is decisive.

The delimitation in trademark protection for slogans is difficult, this lies in the descriptive nature of advertising messages. From the point of view of the Court of Justice of the European Union (CJEU), such a descriptive character lay in the word mark “See More. Reach More. Treat More.”.

In 2017, the applicant, the US company Medrobotics Corp., filed an application with the European Trade Mark Office (EUIPO) for that word mark in Nice Class 10 – Medical devices. Both the EUIPO examiner and the Board of Appeal rejected the desired trademark registration. “See More. Reach More. Treat More.” has only an obvious advertising significance for the relevant public. The mark applied for is devoid of any distinctive character in relation to the goods claimed.

Slogan can be worthy of protection – despite advertising message

The European Court upheld the refusal. In its current judgment, the CJEU made it clear that a slogan could certainly convey an advertising message, and could even be understood primarily as an advertising formula, without this having any influence on its distinctive character. However, it is a condition that a subtle element is found in the advertising message, that it has a certain originality which at least requires interpretation by the relevant public or triggers a cognitive process in the minds of that public. The court referred to the famous slogan of the German car manufacturer Audi “Vorsprung durch Technik” (in engl: “Progress through Technology”), whose trademark protection was confirmed by the European Court of Justice in 2010 (please notice also our article: “Slogan as a trademark? Difficult!”).

Examination of distinctiveness

A word mark consisting of several elements must be based on the overall perception of that mark. The relevant meaning of that mark must be determined on the basis of all its components and not only on one of them, the CFI clarified. In the context of the overall assessment, it may be useful to examine each of the elements making up the mark in question.

Slogan “WET DUST CAN’T FLY” under trademark protection

Medrobotics Corp. claimed that the mark applied for required an interpretation of the goods in question which was no less demanding than that required for the mark WET DUST CAN’T FLY. The word mark “WET DUST CAN’T FLY” was granted trademark protection in 2015, inter alia for cleaning and vacuum cleaners (EU:T:2015:46). In this word mark, the CJEU had noted interpretative efforts on the part of consumers and had attested to the slogan a certain originality and a certain resonance, which made it easy to remember. An advertising slogan cannot be required to show “imagination” or even “conceptual tension” with a surprise effect in order to acquire distinctive character, the CJEU held in “WET DUST CAN’T FLY”.

However, in the slogan “See More. Reach More. Treat More.” there was no need for any interpretation, the CJEU clarified. Nor has the applicant adduced any evidence as to the manner in which the mark is sufficiently original to be classified as distinctive. According to the court, the word mark applied for lacks any need for interpretation, since it means that those goods enable more to be seen, more to be achieved and more to be treated – without the slightest reflection. That is directly linked to the function of the goods claimed, which are used in the context of medical and surgical diagnosis. The European Court confirmed the EUIPO’s previous refusals of this trademark application and dismissed the action in its entirety.

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