08 November 2011

'Quality is the best recipe' - OHIM Appeal

OHIM Boards of Appeal have rejected the slogan ‘La qualité est la meilleure des recettes’ or ‘Quality is the best recipe’.

The application was filed in classes 29, 30 and 32, and registration refused for lack of distinctive character in relation to all the goods specified.

The applicant, Dr. Oetker appealed the decision, but the Board of Appeal concluded that the relevant consumers, which in this case were considered to be the French speaking public, would understand the ‘mark’ as a promotional statement about the quality of the goods rather than an indication of origin.

According to the Board, “La qualité est la meilleure des recettes” indicates that the use of good quality ingredients in a recipe will result in a high quality end product.

Referring back to the judgment of the Court of Justice in the case C-398/08 (“Vorsprung durch technique”) the Board of Appeal said:

“The Court’s statements in ‘Vorsprung durch Technik’ have not changed the criteria in relation to verbal expressions serving as promotional or advertising messages. Although that judgment indeed clarifies certain questions relating to the acceptability of trade marks, it cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can now be registered as a trade mark, merely because it is presented in the form of an advertising message.“

In Audi, the slogan was widely known and had been used for many years for motor vehicles, it could, therefore be considered inherently distinctive in relation to the other goods and services specified in the application.

In the case of “La qualité est la meilleure des recettes”, the slogan had not acquired distinctiveness through use, and its meaning in relation to the specified goods (food, non-alcoholic beverages etc) would have been perceived as a mere promotional statement, which did not indicate the origin of the goods.

Audi had applied to register the words “Vorsprung durch technique” for a wide range of goods and services including ‘vehicles and apparatus for locomotion by land’ in Class 12. The Board of Appeal had refused to register the ‘mark’ on the basis that it lacked distinctive character for all goods and services except those in Class 12. Although the General Court dismissed Audi’s appeal the European Court of Justice subsequently annulled that decision.

The ECJ stated that the public’s perceived some types of mark differently and consequently it could be more difficult to establish distinctiveness in relation to certain marks, such as advertising slogans. However, difficulties in establishing distinctiveness in relation to advertising slogans did not justify the application of stricter examination criteria being applied to such marks.

The ECJ concluded that “Vorsprung durch technique” could be perceived by the relevant public both as an advertising slogan and as an indication of origin of the goods or services. The fact that the ‘mark’ was primarily understood as an advertising slogan had no bearing on its distinctive character.

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