22 April 2014

Combining words to allure, inform and also to be purely functional as a mark

A mere laudatory expression cannot be trademarked. It should be something more, but not just informational though it may be identified with the goods. The applicant (in re Innovation Ventures, LLC, 25-3-2014), found out that it can be quite difficult to write an advertising slogan which would laud, inform and also serve to identify source of goods. His slogan ‘HOURS OF ENERGY NOW’ for energy drinks was held to be only educating the public about a product which acts fast and did not qualify as use as trademark. The applicant argued that it was for the trademark office to show that such use was common parlance and since the objection raised on the ground of being descriptive had been withdrawn, the mark was suggestive and hence registrable. However, in the evidence put forth, like packing, display stands etc the slogan was less prominent than signs like 5- hour energy and Trademark Trial and Appeal Board (TTAB) of the United States was not convinced that the slogan functioned as a trademark.

The appellant in Deutsche Bank AG v. OHIM also pursued with passion its claim to trademark the phrase/slogan ‘Passion to Perform’. Unfortunately creative arguments like combining words indicating emotion with intellect and plea for equal treatment did not sway the CJEU (General Court) which preferred to apply the law stringently in its judgment dated 25th March, 2014. The OHIM had ruled that the mark would be perceived as merely laudatory and could not function as a trademark. It had reasoned that the mere fact that the mark did not convey any information about the services would not make it distinctive.


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