German discount supplier, Lidl has had its attempt to register the trade mark “Deluxe” finally rejected by the General Court (“the Court”).
Lidl originally applied for the trade mark “Deluxe” but this was rejected by the Office for Harmonisation of the Internal Market (“OHIM”) on the basis that it lacked distinctive character.
The Court’s final decision to uphold OHIM’s prior ruling is unsurprising. A trade mark must acquire distinctiveness and not merely describe the goods or service to which it relates. Lidl’s arguments that “Deluxe” was sufficiently unusual were rejected by the Court.
The Court analysed the trade mark as a whole, rather than just the word “Deluxe” and considered the descriptive word was of such prominence that the average consumer would not notice the advertising elements surrounding it, which were in any event indistinctive themselves. The Court considered that the average consumer would therefore think that “Deluxe” simply indicated higher quality and would not necessarily identify a commercial origin of the marked goods. Consequently, the Court refused to grant Lidl the trade mark.
This decision was not unexpected and does not depart from the Court’s established approach. However, it could be interesting for other brand owners, like Lidl, who seek to register advertising slogans as trade marks.
The Court has suggested that graphical elements of a slogan will not be sufficient to satisfy the necessary test for distinctiveness. If slogan marks fail to identify trade origin (as required by Article 7(1)(b) of EU Reg (EC) 207/2009) they will fail. Slogans that are used by brand owners to merely attract the attention of potential consumers may therefore find registration difficult and subsequently the strong brand protection it affords may be unavailable.
The text of this decision is not yet available in English but will be added to this page as soon as possible.