In contrast to the GC's case law, the BGH takes a more applicant-friendly approach, which is probably more in line with the new line taken by the CJEU on the slogan ‘Vorsprung durch Technik’. According to this, slogans, advertising buzzwords and other word sequences should not only have sufficient distinctiveness if they are primarily perceived as an indication of origin. Rather, it should suffice if the designation in question is not exclusively descriptive of the product, but is also understood as an indication of origin.^[1] The requirements for distinctiveness in the context of assessing the distinctiveness of advertising slogans and word sequences must not be overstated. Even a statement that is rather simple in itself cannot be denied from the outset the ability to identify a product.^[2]
On this basis, ‘Today’ and ‘BONUS’ for goods for daily needs^[3] as well as ‘YES’, ‘FOR YOU’ and ‘LOOK’ for tobacco products^[4] had sufficient distinctiveness. On the other hand, the BGH considered the word ‘Premiere’ to be such a common word in everyday language that the sign lacked distinctiveness for the services of a television broadcaster.^[5] ‘Turbo’ was also not distinctive due to its generally promotional character, even for herbicides, fungicides, pesticides and means of destroying harmful animals.^[6] The BGH did not consider the sign ‘TOOOR!’ to be distinctive for products with a direct connection to sports and games, but referred the matter back for further clarification with regard to trademark protection in the clothing sector.^[7] The greeting ‘hey!’ was not distinctive for goods such as sound, image and data carriers, printed matter, clothing or games, as well as services related to these.^[8]
In the case of slogans in particular, the BGH – similarly to the CJEU^[9] – regards the shortness of a sequence of words, its certain originality and conciseness, as well as ambiguity and therefore a need for interpretation as indications of distinctiveness.^[10] Longer sequences of words, on the other hand, are generally devoid of distinctiveness.^[11]
Thus, the slogans ‘Radio von hier, Radio wie wir’ and ‘Partner with the Best’ for the services of a radio station and for electrical appliances, respectively, had sufficient distinctiveness due to their ambiguity.^[12] The word sequence ‘Unter Uns’ was registered because of its brevity and conciseness.^[13] In the case of ‘Link economy’, the descriptive content could only be determined in several steps, which is why the trade mark is eligible for protection.^[14] In contrast, the BGH did not consider the phrase ‘Bücher für eine bessere Welt’ (Books for a better world) to be eligible for protection because the phrase describes printed works to the effect that the printed works should serve to create a better world.^[15] Respectively, the same applied to the trade mark ‘Deutschlands schönste Seiten’ (Germany's most beautiful pages), which was registered for printed matter and publishing services.^[16] Finally, the BGH differentiated according to the goods concerned in a large number^[17] of slogans: The BGH considered the designation ‘Test it’ to be distinctive with regard to smoking accessories and matches, but not for tobacco products; for tobacco products, the word sequence would prompt a test purchase. In the case of smoking accessories and matches, however, a test purchase is not common.^[18] The phrase ‘LOCAL PRESENCE, GLOBAL POWER’ should also be sufficiently distinctive for paper and stationery; however, the phrase was considered to be a factual reference and not distinctive for transport and tourism services, where ‘local presence and global power’ are important.^[19] The phrase was simply too long: ‘The vision: UNIQUE COMMITMENT IN TRUFFLES - The meaning: Everyone knows WHAT to do and when and what NOT to do - The benefit: Everyone does the RIGHT thing at the right time’.^[20]
If a slogan has a distinctive component, this will generally lead to the conclusion that the sequence of words in its entirety does not lack distinctiveness either.^[21]
A slogan such as ‘Nothing is impossible – Toyota’ is therefore eligible for protection due to the distinctive word ‘Toyota’.