Live better, live dangerously: slogans in Russia

"Save money. Live better" is a slogan that is difficult to ignore, even if you (i) already have pots of cash, (ii) live in the lap of luxury" and (iii) have a lifestyle combines a maximum of health with a cornucopia of pleasure. Walmart likes it too, which is why the US-based retail giant uses it as a tag to attract shoppers who might otherwise think the unthinkable and do their shopping elsewhere, for reasons of political conviction, convenience or whatever.

It is not recorded whether Russian supermarket mega-chain Maria-Ra likes "Save money. Live better", but the IPKat gathers that the chain has quite taken a fancy to a Russian slogan which comes out in English as "Pay less. Live better”, for which it sought trade mark registration [Merpel was initially a little startled by this latter slogan, since "Pay less" sounds to her a little like earning less pay, and thus not living better unless someone else is buying all the drinks].  Walmart filed an opposition, which the Russian Patent Disputes Chamber dismissed.

According to the Chamber, the literal translation of Walmart’s “Save money” in Russian is “Keep Money” or “Economize money”. On this basis, the words “Save money” would never translate to “Pay less”. Accordingly Maria-Ra's mark wasn't causing anyone any trouble. To be on the safe side, the Chamber added that the two slogans did not even resemble one another in their design.

The IPKat is a great enthusiast when it comes to the registration of slogans as trade marks, but only when they are truly distinctive. When he sees trite, banal puffs and slogans like "Save money. Live better" or, for that matter, "Pay less. Live better", he has to repress a powerful urge to wish a plague on all the houses of those who seek to monopolise them.

How to solve a problem like Maria here

Source: Petosevic got this from the Altapress.ru news portal and Rospatent

Applications for "There's an App"

Registering "There's an app for that" was a piece of cake
in the US, but Europe may prove more resistant

Matthew Rippon was first.  Lawrence Ryz was last.  Between the two there were many kind souls who sent the IPKat this link to Apple's latest venture into the world of trade mark protection.  The Unofficial Apple Weblog ("Apple trademarks "There's an app for that", here) has spotted the  iToys-to-die-for company's US trade mark for the slogan "There's an app for that."  To be fair to Apple, (i) that tagline has been used to promote Apple's App Store and iOS devices almost since their inception, and (ii) Apple doesn't really have much credible competition anyway in the minds of many consumers, who assume that "App" is just the first three letters of Apple.  Indeed, in some parts of this noble planet, the Kat understands, the slogan has become a jokey colloquialism-cum-conversation-booster, frequently deployed by people when they can't think of a sensible response to what someone else has just said to them. The trade mark, for which Apple filed on 4 December 2009, covers

"Retail store services featuring computer software provided via the Internet and other computer and electronic communication networks; retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics".

Intrigued to see what Apple might be planning on the Eastern side of the Pond, the IPKat checked the warm and user-friendly online search facility of the UK's Intellectual Property Office, where he was rewarded with details of International Madrid (EU) Trade Mark U00001043881 (first designation of the EU for IR 1043881).  Opting for English as its first language and Italian as the second, the applicant boldly went for protection in Classes 09, 35, 38, 42.

The IPKat is genuinely sad that Apple has been so precise and selective in its list of goods and services.  He had hoped that the Cupertino company would be registering its slogan for ashtrays, knitting patterns, meat cleavers and all the other strange things that get inadvertently left in trade mark applications these days -- but it was not to be.  The big question, though, is whether we dull and unimaginative Europeans, on looking at the words "There's an app for that", would ever think "Gosh, that's an indication as to the identity of the origin of goods and services in respect which that slogan is used", rather than "Oh, I suppose there it ..."

Contributions of "There's an app for that" to the cultural enrichment of humanity here, here and here

No Half Measures, except for retiring staff members

The IPKat thanks his friend David Stone (Simmons & Simmons) for drawing his attention to Coca-Cola Company's Appeal, Case O-079-10 before another of the IPKat's friends, Appointed Person Professor Ruth Annand, on 28 February 2010.

As David observes, this was an appeal from the decision of the United Kingdom's Intellectual Property Office (IPO) to reject an application by The Coca-Cola Company to register the word mark NO HALF MEASURES in relation to entertainment and other services in Class 41. The ground of rejection was that the applied-for mark was devoid of distinctive character under Section 3(1)(b) of the Trade Marks Act 1994. He explains:

"The decision is particularly interesting in relation to two main points. The initial IPO hearing was before hearing officer Mr RA Jones, who retired before the unsuccessful applicant made its request for reasons (which enable it to lodge an appeal). The written reasons were therefore given by another hearing officer, Mr AJ Pike, without the trade mark applicant being afforded an opportunity to be heard by Mr Pike. Professor Annand held that this was a breach of Rule 63 of the Trade Mark Rules -- the right to be heard -- saying "the situation is analogous to the death of a judge in the period between trial and judgment reserved. A fresh hearing should be appointed before a hearing officer with no involvement in the case".

This will require a change to UK-IPO practice.

The second aspect of the decision is good news to any trade mark applicant who has struggled to obtain a UK trade mark registration for a slogan without the benefit of proof of distinctiveness acquired through use. Prof Annand helpfully explains the reasoning of the Court of Justice in Case C-398/08 Vorspring durch Technik and the "Catch 22" created by the "misunderstanding and over-enthusistic application of OHIM v Mobelwerk". Rather than remitting the application to yet another hearing officer, she allowed the appeal and found the mark unobjectionable under Section 3(1)(b) for all the services for which it was applied. Several of her comments will be helpful to those trying to convince the IPO to register slogans as trade marks".

Merpel is in two minds about the retirement point: while she fully agrees that the parties have a right to be heard, she can't decide if that's truly applicable here. The IPKat gowever is wholly in agreement with the good Professor regarding the registrability of slogans. An admirer of the Vorspring durch Technik decision, he is delighted that it has already been put to good use.

Coca-Cola formula here

Recipes using Coca-Cola here

Crazy things to do with Coca-Cola here

Vorsprung durch Rechtsstreit as Audi gets its CTM

While the average Audi can put on a neat turn of speed, few would have expected it to take seven years to get from Alicante to Luxembourg. But that's exactly what happened in Case C-398/08 P Audi AG v Office for Harmonisation in the Internal Market, today's ruling of the Court of Justice of the European Union. What took so long?

Right: an early phase of Vorsprung durch Technik, as designers work on the first Audi

In January 2003 car-maker Audi applied to register the word mark Vorsprung durch Technik ("Progress Through Technology") as a Community trade mark for a large range of goods and services in Classes 9, 12, 14, 16, 18, 25, 28, 35 to 43 and 45. The examiner refused the application for most things, saying that the words Vorsprung durch Technik were lacking in distinctive character. He accepted that, regarding'vehicles; apparatus for locomotion by land, air or water’ in Class 12, Vorsprung durch Technik was distinctive for vehicles and their components, but that no new evidence was adduced as to their distinctive character in respect to other goods in that class.

The Second Board of Appeal upheld Audi’s appeal in respect of the goods in Class 12, but dismissed the appeal in relation to all the other goods and services. According to the Board of Appeal nearly all the goods and services related, even if only remotely, to technology -- which even plays an important role in the clothing sector. A manufacturer of such goods whose technology is advanced has a great advantage as compared with competing businesses and the slogan ‘Vorsprung durch Technik’ conveys an objective message to the effect that technological superiority enables better goods and services to be manufactured and supplied. Since, apart from the goods in Class 12, Audi provided no evidence that the slogan ‘Vorsprung durch Technik’ has become a trade mark in the minds of the public, the application must be refused in so far as it relates to goods and services in other classes.

The Court of First Instance (as it was then known) dismissed Audi’s appeal. In its view, although the contested decision did not actually contain a ‘differentiated assessment’ for all the goods and services in all the classes covered by Audi’s application, it still contained an analysis of the relevant public’s perception of that mark in relation to the goods and services which it covers. The public would perceive the expression ‘Vorsprung durch Technik’ as a slogan containing an objective laudatory message, despite the varying levels of technical sophistication of the respective goods and services (these include decorations for Christmas trees, the Kat notes).

The court further held that, while Vorsprung durch Technik can have a number of meanings, or constitute a play on words, or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered, this nevertheless does not mean that it is distinctive. Those various elements would make that mark distinctive only if the mark were perceived immediately by the relevant public as an indication of the commercial origin of the goods and services which it covers. In the case before it, the relevant public would in practice perceive that mark, first and foremost, as a promotional formula. Given the broad range of meanings attributable to the notion of ‘Technik’ in German, the reference to that notion would not, for all the goods and services covered, confer distinctive character on the mark applied for. Secondly, the German word ‘Vorsprung’ (meaning, inter alia, ‘advance’ or ‘advantage’) is, particularly for the German-speaking public, primarily laudatory in nature. Thirdly, the mark was addressed to a wide public and the majority of undertakings wishing to provide goods and services to that wide public might well, in view of the laudatory character of that expression, use it themselves, regardless of how it ought to be interpreted.

Audi then appealed further to the Court of Justice, which took a more sympathetic view, set aside the court's decision and annulled that of the Board of Appeal, in so far as those decisions refused Audi’s application for registration. According to the Court of Justice:

* Difficulties in establishing distinctiveness which may be associated with word marks consisting of advertising slogans do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness as interpreted in the case-law of the Court of Justice, which has held that an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctive character.

* The mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character. A mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character.

* The Court of First Instance did not substantiate its finding to the effect that the mark applied for will not be perceived by the relevant public as an indication of the commercial origin of the goods and services in question; the court found that Vorsprung durch Technik can have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered. Although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan has distinctive character, the presence of those characteristics is likely to endow that mark with distinctive character.

The IPKat thinks the Court has got it just right, but is (as ever) saddened at the length of time it takes to get from application to final ruling. Merpel says, I just can't wait to see Vorsprung durch Technik used as a trade mark on paint-brushes, whips, animal skins and adhesives for stationery and household purposes; it will so enhance the brand value.

Quis custodes custodiet?

This is too good to save till Friday, says the IPKat, who thanks fellow blogger Peter Groves for sending it to him. Designer Hannah McHalick is suing the Kent Police for allegedly copying a slogan from her baby clothes range for an online shop. The police are apparently selling baby clothes bearing the slogan "I've Been Inside For Nine Months".

Ms McHalick says the slogan is a rip-off from her product range, which includes black-and-white convict-style baby grows, bibs, T-shirts and hoodies with the slogan "Been inside for nine months". The police deny infringement, maintaining that their product range is different because they have added the word "I've" before Ms McHalick's slogan.

The IPKat is most amused. He doubts whether the words "Been inside for nine months" are an original literary work in their own right. He also fails to see how, if that slogan were an original literary work, the addition of the word "I've" would make any difference to the question of unlawful reproduction -- which all goes to show that the criminal enforcement agencies could probably do with a refresher course on their IP law. Merpel says, let's say it's a trade mark matter: the slogan would either be descriptive (for babies that go to their full term) or deceptive (for those born early) -- and would the relevant consumers regard the slogan as an indication of the origin of the goods? But there's always passing off ...