No trademark protection for „TOUCHING HEARTS, CHANGING LIVES”

Whether trademark protection may be obtained for a slogan, remains difficult to be predicted. In this case, the refusal of the Community trademark application for “TOUCHING HEARTS, CHANGING LIVES” was confirmed by the Fourth Board of Appeal at the Office for Harmonization in the Internal Market (“OHIM”).

The applicant had filed the Community trademark application “TOUCHING HEARTS, CHANGING LIVES” (“CTM application”) for goods and services in Classes 9, 16, 35, 41 and 44.

The examiner at OHIM rejected the CTM application arguing that it was devoid of any distinctive character, Art. 7 (1) (b) CTMR. According to the examiner the CTM application would be perceived as a mere laudatory message with nothing else in it to enable the public to memorize the sign easily and instantly as a distinctive trademark for the goods and services applied for. The applicant could also not convince the examiner that the anaphora through the repeated use of verbs in the active form (namely TOUCHING and CHANGING) makes the slogan memorable, and thus distinctive.

The applicant appealed the decision. In its statement of grounds in support of the appeal it examined in detail the structure and meaning of the CTM application and concluded

• that it had no apparent meaning with respect to the goods and services applied for;
• and that the rhythm and structure of the CTM application would add to its distinctiveness and memorability.

The Fourth Board of Appeal rejected the appeal and confirmed the refusal of this CTM application.

In its reasoning it acknowledges that only the ability of the CTM application to be used as advertising slogan does not prevent it from being registered as a trademark and that no specific criteria shall be applied to this category of trademarks. Even assuming a high level of attentiveness of the relevant public, the Board of Appeal denied, however, that the CTM application contained anything exceeding its plain advertising function. It argued that the CTM application would be understood in relation to the goods and services applied for that these can help the consumers to feel better and change their lives. In addition, the public would not expect promotional slogans to be precise or to fully describe the characteristics of the goods and services at issue. To add further emphasis the Board referred in this context a number of decisions by the General Court in which the registration for slogans were refused despite of their vague and indefinite character. The Board of Appeal concluded that the CTM application did contain any imaginative, surprising or unexpected elements which would confer distinctive character on it.

Due to the Board of Appeal’s perception of the CTM application, also the increased memorability caused by rhythm and structure of it, did not help the applicant.

As a result it remains difficult to predict when a trademark application for a not descriptive but in a vague and indefinite way allusive slogan will have the special “something” to be eligible for Registration.