Registration of a trade mark which consists of signs or indications that are otherwise used as advertising slogans, indications of quality or incitements to purchase the marked products is not excluded as such by virtue of such use.^[1] However, it is possible that slogans, advertising catchwords and other word sequences in particular may be perceived by the relevant public in a different way from other trade marks and that it may therefore be more difficult to establish distinctiveness. This may be the case in particular where, in the assessment of the distinctive character of the trade mark concerned, it is found that it performs an advertising function, consisting, for example, in extolling the quality of the product concerned, and that that function, in comparison with its function of indicating origin, is not obviously of secondary importance. In such a case, it may be necessary to take into account the fact that consumers are not in the habit of making assumptions about the origin of the goods based on such slogans.^[2] In principle, all trade marks which consist of signs or indications that are otherwise used as advertising slogans, indications of quality or incitements to purchase the goods or services designated by those trade marks inherently include, to a greater or lesser extent, an objective message.^[3] In this context, a finding of lack of distinctiveness does not depend on a requirement to show that the term in question is commonly used in indications in the course of trade, particularly in advertising.^[4]
For example, the term SAFETY 1ST was unregistrable for various children's products, such as car seats or high chairs, which could have a safety-related reference.^[5]
However, the mere fact that a trade mark is perceived by the relevant public as an advertising slogan and that other undertakings might appropriate it in view of its laudatory nature is not sufficient to conclude that that trade mark lacks distinctiveness.^[6] The laudatory sense of a word mark does not preclude it from being capable of guaranteeing the origin of the designated products to consumers. Such a trade mark may therefore be perceived by the relevant public both as a promotional slogan and as an indication of the commercial origin of the products in question. It follows that, if that public perceives the trade mark as an indication of origin, the fact that it is also, or even primarily, perceived as a promotional slogan is irrelevant as far as its distinctiveness is concerned.^[7] In this context, it is also not necessary for the acceptance of the required minimum level of distinctiveness that the advertising slogan be imaginative and have a conceptual field of tension that results in a surprise and thus a memorable effect.^[8] On the other hand, factors such as the fact that a trade mark may have several meanings, constitute a play on words or be perceived as imaginative, surprising and unexpected and thus memorable are certainly criteria that indicate that a sign has sufficient distinctiveness.^[9] The same applies if the trade mark is not just an ordinary advertising message but has a certain originality or conciseness, requires a minimum of interpretation or triggers a thought process in the relevant public.^[10] It should also be taken into account if it is a famous slogan that has been in use for many years, so that the public addressed may have become accustomed to associating that slogan with the products marketed by a particular company, and it also makes it easier for that public to recognise the commercial origin of the designated goods or services.^[11]
On this basis, a lack of distinctiveness of the slogan ‘Vorsprung durch Technik’ cannot be justified solely by the fact that the slogan is primarily perceived by the public as an advertising message. Rather, the distinctiveness of the slogan must be examined in detail.^[12]