Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

15 luglio 2008

CFI on the lines of UKPTO

Stefano Sandri

Recently the CFI issued two decisions on 9 July 2008 (T-70/06, Vorsprung durch Tecknik, classes 9, 12, 14, 16, 18, 25, 28, 35 à 43 and 45, and T-58/07, Substance for Success, classes 1, 40, 41 and 42) confirming its very well established case law on slogans. Accordingly, slogans per se are eligible for trademark registration, provided they are distinctive of the products/services origin and be perceived as such from the relevant people.

This is not the case when slogan is merely serving a promotional function and could apply to any undertaking. In this respect, the CFI is manifestly consistent with the guidelines issued on 2006 by the UK’ Office (see IPKAT, 11 January 2006).

Less convincing is the Court when i
t pretends to discuss slogans as such by submitting them to the test of the absolute grounds of refusal. If you accept that every sign, even coincident with a slogan could be registered as a trademark, the test of the absolute grounds is indipendent from the nature of the sign itself.

The key point, once again, is how the consumers perceive the sign and if they can be induced, or not, in making a purchase decision process. In many case the border line is very ambiguous and clearly you must decide on a case by case basis.

In any trademark, however, there is always a promotional undisclosed message and advertising is the best way for the owner to reach is target. Suggestive trademarks, on the other hand, are accepted.

I have the feeling that Courts in Luxembourg suffer a sort of inferiority syndrome vis a vis slogan which preclude them to be just a bit more liberal in their decisions.

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