광고 메시지의 식별력―“we’re on it”은 식별력이 없다

Distinctiveness of Advertising Message

Registration of the word mark ‘we’re on it’ was refused. In this context, the CFI provided information on the assessment of the distinctiveness of an advertising message and a slogan. Even a promotional advertising message may be protected as a trade mark―but several interpretations of the slogan are not sufficient for distinctiveness. It is true that even an advertising message or slogan used as an indication of quality or as an invitation to purchase the goods or services covered by the marks may be expressly protected as a trade mark. Even a laudatory meaning of a word mark does not in principle preclude the advertising message from being protected as a trade mark. A prerequisite for this is that such a slogan is not just an ordinary advertising message, but must have a certain originality or resonance which requires at least an interpretation by the relevant public, the CJEU has already clarified several times. Nor can it be required for the minimum degree of distinctiveness required that the advertising slogan be “fanciful” and contain a surprise effect, the Court added. However, if a plaintiff claims that a trade mark applied for has distinctive character, contrary to the assessment made by the EUIPO, he must demonstrate by means of concrete and substantiated information that the trade mark applied for either has inherent distinctiveness or has acquired it through use. In the present case around the advertising message ‘we’re on it’, the CJEU refused trademark protection. The phrase “we’re on it” meaning “we’ll take care of it” was a banal message, the Court held, a promise formulated in such general terms that it could be used by any supplier or service provider to encourage the purchase of goods or services. That advertising message did not contain any additional distinctive element beyond its obvious promotional meaning. The mark applied for is a promise made in general terms and a common advertising message which applies without distinction to all the goods and services concerned. The Court therefore held that the mark was not capable of identifying the commercial origin of those goods and services and upheld the Board of Appeal’s identical decision.