INTA's Trademark Reporter Montenegro case summary - Distinctiveness (Visa)

By Jasna Jusic, published in the March/April 2012 edition of the IAR Trademark Reporter

On April 21, 2009, Visa International Service Association applied for the registration of the mark/slogan MORE PEOPLE AROUND THE WORLD GO WITH VISA, for services in Class 36. The Montenegrin IPO rejected the registration on the ground that “[the mark’s] general appearance” did “not enable the goods/services to be distinguished in the course of trade.”

The IPO found that this slogan was a simple and trivial claim that “a lot of people around the world go with Visa,” and therefore was nondistinctive and not suitable to distinguish the services in Class 36 in the course of trade. Further, the IPO found that the mark designated “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 covered 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 were often descriptive and would appear as a simple and understandable claim that would be easy to remember. Furthermore, the applicant pointed out that the purpose of a slogan is to advertise—namely, to create a need in a customer’s mind and motivate him to buy a certain product or use a certain service. The applicant explained that the applied-for slogan was beyond a simple claim—that is, it represented a subtle invitation to use VISA. The applicant also pointed out that the mark contained the distinctive element VISA, protected with three trademark registrations in Montenegro, and therefore could not be considered nondistinctive.

With regard to the second assertion that the slogan designated the type of services in Class 36 (namely, financial affairs done through VISA credit cards), the applicant argued that the slogan did not designate these services in any way. Indeed, only the registered trademark VISA, as a part of the contested slogan, pointed to the services in Class 36; and these services were indicated only as a result of the strong recognizability of this wellknown trademark.

Finally, the applicant presented numerous registrations already obtained for the applied-for 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 CTMs. These trademarks will become part of the Montenegrin legal system once Montenegro joins the European Union.

On December 30, 2011, the IPO accepted the arguments of the applicant and invited it to pay the registration fees.

This case is important, as it establishes a practice regarding the registration of slogans in Montenegro.