Visa Succeeds in Registering Slogan in Montenegro

Jun 26 2012 - 15:33

Visa International Service Association, American multinational financial services corporation, applied for the protection of MORE PEOPLE AROUND THE WORLD GO WITH VISA mark/slogan for the services in International Class (IC) 36 on April 21, 2009. The Montenegrin IPO rejected the registration, claiming that the mark’s “general appearance does not enable the goods/services to be distinguished in the course of trade”.

The IPO found that this slogan is a simple and trivial claim that “a lot of people around the world go with visa” and therefore, is non-distinctive and not suitable to distinguish the services in class 36 in the course of trade. Furthermore, the IPO found that the mark “designates exclusively the type, purpose, time or method of production, quality, price, quantity, weight or geographical origin of the goods/services”, and specified that the mark designates the type of services in class 36, namely financial affairs, done through VISA credit cards.

The applicant disagreed with both claims of the IPO, identifying in its response a number of slogans registered for the territory of Montenegro and offering analysis of the same. The applicant explained that slogans often appear as a simple and understandable claim that is easy to remember. Furthermore, the applicant argued that the purpose of a slogan is to advertise, namely, to create an association in a customer’s mind between the slogan and the source of the product, and motivate a customer to use a certain product or service. The applicant explained that the subject slogan is beyond a simple claim, that is, it represents a subtle invitation to use VISA cards. The applicant also pointed out that the mark contains the distinctive element VISA, which is protected with three trademark registrations in Montenegro, and therefore cannot be considered non-distinctive.

With regard to the second assertion that the slogan designates the type of services in class 36, namely financial affairs facilitated through VISA payment cards, the applicant argued that the slogan does not designate these services in any way. Moreover, the registered trademark VISA, which is a part of the subject slogan, is a well-known mark and has strong recognition power for class 36 financial services.

Finally, the applicant presented numerous registrations already obtained for the subject mark/slogan worldwide, as well as for two similar trademarks/slogans PEOPLE EVERYWHERE GO WITH VISA and MORE PEOPLE GO WITH VISA, which are registered community trademarks. These trademarks will become part of the Montenegrin legal system once Montenegro joins the European Union.

The IPO accepted the arguments and invited the applicant on December 30, 2011 to pay the registration fees.

This case is important as it establishes a practice with regards to the registration of slogans in Montenegro.

By: Jasna Jusic

For more information, please contact Jasna Jusic at our Montenegro office.

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