"54 As regards the goods and services in question, other than those in Class 12 [ie "vehicles and apparatus for locomotion by land"], the Board of Appeal based its refusal of registration on the fact that the slogan ‘Vorsprung durch Technik’ conveys an objective message to the effect that technological superiority enables the manufacture and supply of better goods and services. According to the Board of Appeal, a combination of words which limits itself to that banal objective message is, in principle, devoid of any inherently distinctive character and cannot therefore be registered unless it is shown that the public has come to perceive it as a trade mark.

55 That analysis shows that Article 7(1)(b) of Regulation No 40/94 was misapplied.

56 ... all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message. It is clear, however, from the case‑law ... that those marks are not, by virtue of that fact alone, devoid of distinctive character.

57 Thus, in so far as those marks are not descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94, they can express an objective message, even a simple one, and still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring little in the way of interpretation by the relevant public, or setting off a cognitive process in the minds of that public.

58 Even if it were to be supposed that the slogan ‘Vorsprung durch Technik’ conveys an objective message to the effect that technological superiority enables the manufacture and supply of better goods and services, that fact would not support the conclusion that the mark applied for is devoid of any inherently distinctive character. However simple such a message may be, it cannot be categorised as ordinary to the point of excluding, from the outset and without any further analysis, the possibility that that mark is capable of indicating to the consumer the commercial origin of the goods or services in question.

59 In that context, it should be pointed out that that message does not follow obviously from the slogan in question. As Audi observed, the combination of words ‘Vorsprung durch Technik’ (meaning, inter alia, advance or advantage through technology) suggests, at first glance, only a causal link and accordingly requires a measure of interpretation on the part of the public. Furthermore, that slogan exhibits a certain originality and resonance which makes it easy to remember. Lastly, inasmuch as it is a widely known slogan which has been used by Audi for many years, it cannot be excluded that the fact that members of the relevant public are used to establishing the link between that slogan and the motor vehicles manufactured by that company also makes it easier for that public to identify the commercial origin of the goods or services covered.

60 It follows from the foregoing considerations that the contested decision must be annulled in so far as, on the basis of Article 7(1)(b) of Regulation No 40/94, the Second Board of Appeal refused in part the application for registration of the mark Vorsprung durch Technik".

In the case, which has already attracted a number of comments, Landmark VIP Services was sued by the business magazine Forbes and its Russian publisher. The latter alleged a trade mark infringement, the result of registration and use of the domain name Forbes.ru by the defendant (the mark being very similar to the claimant's ForbesRussia.ru). This was the first time that the court awarded a compensation higher than the statutory limit of RUB5,000,000. Natalia Gulyaeva, a leading IP lawyer in Russia, suggests that the award of RUB8,000,000 (nearly $300,000) may set a precedent for future cybersquatter disputes.

However, this may not be the end of the story as Landmark VIP Services are expected to appeal against the decision.

Natalia Gulyaeva warns that the number of disputes concerning registration of domain names, conflicting with the IP rights of their holders, is likely to increase this year. This is so due to the possibility of registration  of Cyrillic domain names in the .рф (.rf) zone; the procedure which will become available to wider public after 25 march 2010.

The original article can be found here. 

Just out today, the General Court's judgment in case T-460/07 (Nokia v OHIM, Medion) was a bit disappointing for Nokia. As the IPKat already informed us last week,Nokia sought to register "LIFE BLOG" as a CTM in classes 9, 38 and 41. 

Medion opposed mainly on the basis of an earlier German trade mark registration for "LIFE" in classes 1,7 to 11, 16, 21, 28, 37, 38, 41 and 42.Nokia failed to convince OHIM's Opposition Division, as well as the Board of Appeal, and the General Court was not too kind either. It upheld the Board of Appeal's decision and rejected Nokia's appeal. The Court held thatonsumers generally attach more importance to the beginning of words since they are more pronounced (para. 60 citing case T-325/04 "Wordlink") and made the following distinction regarding the word "blog" (paras 62 and 63)

“Applied to IT or telecommunications goods or services, ‘blog’ must be considered as having a limited distinctive character since, by reference to that area, that word is usually understood, even by the average German consumer of those goods or services, as referring to an online diary (weblog). In that category, the word ‘life’ has a greater distinctive character than the word ‘blog’. However, as regards all the other goods or services which do not imply an IT or telecommunication element, and in regard to which the word ‘blog’ has no meaning, it must be held that neither of the two elements ‘life’ or ‘blog’ emerges clearly as the element with the most distinctive character. [The juicy part comes next] However, as OHIM has rightly observed, the greater degree of inherent distinctiveness of ‘blog’ will, assuming it is established, be somewhat offset by the fact that ‘life’ is at the beginning of the sign, as the public’s attention is usually concentrated on the beginning of the sign applied for.”

Further the Court held that “according to the case-law, when a composite mark consists of one component juxtaposed to another trade mark, that latter mark, even where it is not the dominant component in the composite mark, may still have an independent distinctive role in the composite mark. In such a case, the composite mark and the other mark can be regarded as similar (Case T-212/07 Harman International Industries v OHIM – Becker (Barbara Becker) [2008] ECR II-0000, paragraph 37; see also Medion, paragraphs 30 and 37). In this case, having regard to all the above considerations, the ‘life’ element retains an independent distinctive role in the mark applied for” (para 73).

Another interesting bit revolves around the Court’s answer to Nokia’s argument of peaceful coexistence on the market of many marks incorporating the term “life” [kind of a “crowded field argument”]. The Court held that although it could not be entirely excluded that such coexistence could reduce the risk of confusion [that sounds like “don’t even think about it”], nevertheless, it should be proven before OHIM that such coexistence is based upon the absence of consumer confusion [yeap, that’s a no – but how could you ever prove that?]

Comments or thoughts anyone?