Wonderfully distinctive

The assessment of the distinctiveness of trade marks consisting of a slogan remains a difficult issue before patent offices and courts throughout Europe.

In a recent case, the Austrian Supreme IP Tribunal had to decide on the registrability of the word mark “WONDERFUL TONIGHT” for goods in class 3 (including parfumes, soaps, etc.).

The first two instances at the Austrian Patent Office refused the application on the basis that the mark at issue was merely descriptive and was also devoid of distinctive character. The public would perceive the sign solely as a laudatory remark. The argument put forward was that the consumers could immediately identify the sign with a statement like “you are/you will be (look/feel/smell) wonderful tonight”. Also, the combination of words in the slogan applied for was not unusual. Therefore, the sign could not fulfill the main function of a trade mark to identitfy the origin of goods and services.

The applicant successfully appealed.

In its decision, the Austrian Supreme IP tribunal noted that the sign at issue consists of a gramatically incomplete combination of words which requires interpretation on the part of the consumers. On the other hand, the absolute grounds for refusal applied by the lower instances are not be invoked for merely allusive marks. For this reason, “WONDERFUL TONIGHT” was apt to function as a trade mark.

It remains to note that the case discussed here is only one of several recent decisions where the Supreme IP tribunal overturned the lower instances in regard to findings of descriptiveness and lack of distinctive character. For instance, the Supreme IP tribunal allowed registration of the sign LOUNGE.AT for services in classes 35, 38, 41, after the Austrian Patent Office had found lack of distinctive character. Thus, applicants in Austria may be well advised to fight through all instances in arguing the distinctiveness of slogans.

Johannes Strobl
European Patent Attorney