W&V Werben und Verkaufen 19/2000
dated 18th of May 2000
Author: Dr. Eberhard Kolonko

In two recently published court's decisions, the highest German court, the Federal Supreme Court, (BGH), has made an important change of course for and in favour of the advertising industry. The court has now opened up the way for advertising slogans to become trademarks, the registration of which has been, until now, regularly rejected to a wide extent by the German Patent and Trademark Office.

Until now, advertising slogans were practically unprotected.

Neither in the past nor until now, has copyright protection been grated to advertising slogans. According to the courts, they are mostly too short for expressing a creative and individual character. Copyright protection was only granted in rare cases, such as in the case of the slogan "A four-poster bed in your hand luggage" for a sleeping bag. This decision was also made decades ago.

The rule was also to reject protection of advertising slogans in respect of trademark protection. On a regular basis, the German Patent and Trademark Office rejected the registration of advertising slogans as a trademark. The Patent Office opined that advertising slogans, which are still persistently defined as advertising paroles by the Patent Office, do not belong in the trademark register from their perspective. These slogans would only "advertise" goods and services from a marketing perspective and would not serve the distinction of products of different companies. Such "word sequences", which do not form a complete sentence, do not possess the characteristic of differentiation, which is normally required for a trademark..

Therefore, the Patent and Trademark office rejected the submitted application for the trademark registration of the slogan "partner with the best" for electrical and technical devices in the same manner as the advertising slogan of a radio broadcasting station "local radio, radio like locals". The Federal Patent Court confirmed this reserved attitude with two decisions dated 23rd of October 1996 and 14th of July 1997. The slogans "not always, but always often" for beers and beverages and "we drive you further" for cars and car accessories experienced the same fate in 1997.

Now, the Federal Supreme Court as the highest institution has repealed the decisions of the Federal Patent Court on the slogans "partner with the best" and "local radio, radio like locals". The court clearly objected that the Federal Patent Office illegitimately set higher standards for the differentiation of advertising slogans than for word trademarks. The opinion of the Federal Patent Court, that the advertising slogan must have a component indicating individuality, so that the consumer immediately allocates the manufacturer to the advertising parole as is the case with the slogan "Be advised, drinking Spaten is wise", does not apply according to the Federal Supreme Court, BGH. On the contrary, it is the shortness, originality and conciseness of the advertising slogan that provides a comprehensible and expressive character and therefore leads to a competitive trademark. (BGH, decisions dated 8th of December 1999 in WRP 2000, pages 298 and 300.

The decision of the Federal Supreme Court, BGH is to be completely agreed upon here. The rejection of the registration of advertising slogans as that of a trademark through the Patent Office was and is not natural. The claim, the wording of an advertising slogan must result in the consumer thinking of a certain company is completely exaggerated. The registration of trademarks does not require such preconditions. Here, only "suitability" is required to distinguish between products. The so-called strong trademarks in particular are those which do not lead immediately to the allocation of certain goods or services when recognised for the first time. These trademarks are "Mercedes" (christian name of the daughter of the company's founder), "Yello" and "Infineon" for example.

It is owed to the advertising companies, their advertising agencies and their lawyers that they remained persistent in the two cases decided by the Federal Supreme Court, BGH and that they neither deviated from their opinion, that a concise advertising slogan can have the effectiveness of that of a trademark. It has to be taken into consideration that such decisions of the highest courts are only then possible, if companies go through all the courts. And this requires entrepreneurial courage to take a risk in any case.

The about-turn of the Federal Supreme Court, BGH was not completely made of their own accord. The European OFFICE FOR HARMONISATION IN THE INTERNAL MARKET in Alicante influenced this progress positively. According to a decision dated 11th of February 1999, it was appreciated that the relatively long slogan "beauty isn't about looking young but looking good" for body care products is typical, catchy and distinguishing in respect of its general impression. The court acceded to register the slogan as a European trademark. The same reasons led to the valuable registration as a trademark of the slogan "think earlier about later" by the authority on the 4th of May 1999.

The result of these new decisions is that advertising companies have better protection against the unauthorised usage of their advertising slogans. Once registered as a trademark, they do not have to provide evidence of many years' intensive usage in order to convince courts of the slogan's market acceptance. For advertising agencies it is now possible to register their created slogan with the German Patent and Trademark Office as a trademark prior to presenting it to the customer. The submission of the application is favourably priced and processed promptly. Even if an application should not result in a registration at a later stage, decently mentioning that an application for registration has been submitted might help to avoid an eventual "hostile adoption" of the slogan.