Slogan Fails Distinctiveness Test

Trade marks are a fairly difficult area in law and challenges to the registration (or, if registration is granted, the validity) of trade marks are common.

Words and/or logos can be trade marks, but to be acceptable for registration a trade mark must be – among other things – distinctive.

Recently, the General Court of the European Union (GCEU) heard an appeal against the refusal to register 'Passion to Perform' as a Community Trade Mark (CTM). The application had been made by Deutsche Bank in relation to its services.

The application had been made under five classes, as follows:

Class 35: Advertising; business management; business administration; office functions;
Class 36: Insurance; financial affairs; monetary affairs, real estate;
Class 38: Telecommunications;
Class 41: Education; providing of training; entertainment; sporting and cultural activities; and
Class 42: Scientific and technological services, research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

The GCEU considered that the phrase was neither distinct nor did it indicate the origin of the services concerned. It upheld the ruling that the slogan could not be registered as a CTM.

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