More than just a catchy beer slogan
With thousands of competing products worldwide, the beer business is becoming a crowded field – so there is more likely to be conflict between brand names, product names and trademarks. As trademarks are still vital in terms of market presence, breweries must meet the challenge of finding the right mark to achieve a strategic market position. In Germany alone, nearly 1,400 breweries produce up to 6,000 types of beer (around one-third of the world’s beers), and the German Trademark Register contains more than 12,000 national trademarks registered for the beer category. Thus, it is getting harder to come up with an original mark. Against this background, Bavaria – as one of the most popular beer-producing regions in the world, with a long tradition of brewing – is a model not only for discipline and technical know-how, but also for trademark matters. This was underlined by a recent Federal Patent Court (BPatG) decision on whether a Bavarian brewery could register the sign ORIGIN OF BEER (BPatG, 26 W (pat) 514/12). In addition to the court finding the term ORIGIN OF BEER to be registrable for “beer, beer mixed beverages and non-alcoholic beverages” in Class 32 and for specific services in Class 35 and 41, the decision forms part of the conflicting case law on so-called 'slogan' marks.
In accordance with Office for Harmonisation in the Internal Market (OHIM) practice regarding the registrability of a trademark, decisions of the German Patent and Trade Mark Office (GPTO) are based on a sign’s strength. The more distinctive a trademark, the stronger and more defendable it is. If a trademark is not distinctive it is considered to be too weak to be registered unless consumer awareness and recognition can be proven. Strong marks include memorable, unique words, including those that are made up or unconnected to the product that they identify. Nevertheless, weak trademarks provide information about the product to the consumer and can be easily remembered. A weak mark may acquire consumer awareness through extensive sales and marketing as consumers start to associate the name with a particular source.
In principle, slogan marks are acknowledged by national trademark offices as well as OHIM. Nevertheless, the fact that these marks provide information about goods and services to consumers means in the context of trademark applications, these marks are often held to be descriptive and to lack distinctiveness. This was also the case with the German application for the ORIGIN OF BEER mark. The GPTO had refused to register the mark on the grounds that the sign was devoid of any distinctive character. In particular, according to the applicant’s own advertisement stating that it was the oldest working brewery in the world, the GPTO considered the trademark to be of a promotional nature and, in addition, highly descriptive.
In its appeal before the BPatG the applicant argued that it was unnecessary for the slogan mark to either have an independent element which could be protected, or to be imaginative as a whole. Rather, the distinctiveness of the mark was a question of whether the word order was exclusively descriptive regarding the goods and services in question or had a distinctive character. With regard to the Federal Supreme Court’s view that any distinctiveness is enough to meet the provision for registrability, which applies to all types of trademark, the BPatG admitted that customers would not perceive the words 'origin of beer' as an indication of taste, colour, concentration of alcohol, consistence, value or price, amount, time or place of the manufacturing process. Thus, due to its various possible meanings, the sign ORIGIN OF BEER was ambiguous and open for interpretation. Further, the BPatG again confirmed that advertising function and indication of origin are not mutually exclusive, and therefore an indirectly descriptive advertisement message can also have the function of indicating origin. Based on that, a sign will fail registration only if the public in question perceives the advertising function only (see also BEST BUY, C-92/10 P, European Court of Justice). In conclusion, in assessing the slogan ORIGIN OF BEER a factual reference to beer had to be noted, but there was also an undefined factual reference based on the vagueness regarding the characteristics of the product (eg, the place or time of origin). The fact that the slogan consisted of a short and concise word order was also beneficial. Thus, the BPatG held that the slogan ORIGIN OF BEER was vague, ambiguous, memorable and sufficiently distinctive.
Previous decisions on slogan marks show that the assessment of whether a slogan is distinctive can be quite difficult. Therefore, slogan marks should not exclusively consist of a very simple slogan which does no more than refer generically to the quality of the goods in a merely laudatory manner (see THE BEST BEER OF AMERICA, T-191/07, Court of First Instance). Further, it should not consist merely of signs or indications which may serve in trade to designate the nature of the goods or which are likely to deceive the relevant public as to their nature, but rather it should be ambiguous.
In its decision the BPatG emphasised that whether a slogan should be understood as a purely descriptive reference to the goods and services in question should be decided on a case-by-case basis. With respect to the difficulty of drawing a clear line between distinctive slogans and purely descriptive slogans, it is unsurprising that various trademark offices may reach different conclusions regarding the same or similar slogan marks. However, signs containing slogans have become popular in commerce, and consequently there is a growing need for the courts to formulate comprehensive guidelines concerning the registrability of these kinds of mark. Thus, the registration of the ORIGIN OF BEER trademark shows that it is worth appealing the decision of a national trademark office or OHIM, and seeking the ruling of a higher instance.
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