4 May 2009

Audi loses its Vorsprung

In Audi AG (Audi) v Office for Harmonization in the Internal Market (OHIM) (9 July 2008) the European Court of First Instance (CFI) upheld a decision confirming that the famous German automobile manufacturer could not register its trade mark VORSPRUNG DURCH TECHNIK (German for 'advancement through technology') in respect of certain goods and services.

Audi sought to register its Vorsprung mark in 1996 and had been using the slogan internationally since 1971. In 1997 Audi successfully argued that the slogan had acquired a secondary meaning for certain goods in Class 12 (relating to vehicles) of the Nice Classification and the mark was registered as a Community Trade Mark for those goods.

In January 2003 Audi sought to register VORSPRUNG DURCH TECHNIK as a Community Trade Mark for various goods and services, a number of which related to technology, over and above the registration in Class 12 for motor vehicles.

While a number of applications were accepted, Audi's applications in Classes 9, 14, 25, 28, 37, 38, 39, 40 and 42 were refused on the basis that:

  • these goods and services relate to technology; and
  • the slogan VORSPRUNG DURCH TECHNIK is not distinctive when used in relation to these goods and services.

Audi appealed to the CFI and argued that:

  • Sufficient weight had not been given to the fact that the various goods and services covered by its applications had differing degrees of technicality, that these differences should have been taken into account and the goods and services at issue should have been examined individually.
  • VORSPRUNG DURCH TECHNIK was not, from a grammatical point of view, absolutely accurate and this would trigger a process of 'evaluation and reflection' from consumers. Audi claimed that the mark VORSPRUNG DURCH TECHNIK was fanciful and distinctive and therefore registrable in the disputed classes.

In dismissing both these arguments, the CFI held that:

  • the slogan VORSPRUNG DURCH TECHNIK conveys an objective message and that the relevant public would see the mark as a descriptive slogan; and
  • that VORSPRUNG DURCH TECHNIK is undoubtedly a promotional slogan which would be easily understood by consumers.

While the CFI conceded that VORSPRUNG DURCH TECHNIK may have various meanings, it concluded that the phrase would not be perceived by consumers as an indication of origin of the goods or services, and could thus not be used as a trade mark.

Even though it had made use of the slogan for more than 35 years, it was still not sufficient for the Ingolstadt firm to register it for goods and services related to technology.

Eben van Wyk
Director: Intellectual Property

Rico Burnett
Associate: Intellectual Property

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