Author: Trecina Surti (Novagraaf)
Date of publication: 03/09/2018
Although not impossible, seeking trademark protection for slogans can prove difficult. While some slogans have achieved success, most are unlikely to meet the requirements for trademark registration. Trademark Attorney Trecina Surti sets out the criteria to consider when looking to protect a slogan in the European Union.
Slogans are memorable mottos, phrases or taglines used in advertising and for promoting a brand. Generally used alongside the main brand identifier, e.g. the company name, they can help companies to build brand identity, and yet are rarely considered distinctive enough on their own to be registered as a trademark. Registration is possible, however, as Nike’s ‘JUST DO IT’ and McDonald’s ‘I’M LOVIN’ IT’ trademarks show.
Why register a slogan as a trademark
The right slogan can add significant value to a brand. Businesses understandably wish to protect that value, and the marketing efforts and resources involved in its creation. However, in order to successfully obtain trademark protection for a slogan, the standard criteria for trademark registration still needs to be fulfilled, in that it must:
- Be available for registration in the chosen class, i.e. the same or a similar slogan must not have been already registered in the class or jurisdiction for the same or similar group of services;
- Not be too ‘descriptive’: if the trademark is too descriptive of the goods or services or any characteristics of them, then the trademark office will likely object to the mark;
- Be ‘distinctive’: the more distinctive the wording used, the more likely it will be that the trademark will be awarded protection by the relevant register.
It is this final requirement that can often pose the greatest hurdle for brand owners seeking to register their slogans as trademarks. The EUIPO is especially strict when it comes to trademark protection for slogans, and such marks must first and foremost be distinctive. In other words, laudatory, common phrases are unlikely to achieve registration in the EU.
It was previously held that slogans by the very nature were not distinctive enough to function as trademarks. However, Audi’s seven-year battle to register its ‘Vorsprung durch Technik’ slogan (‘advantage through technology’) at the EUIPO, marked a change in this view. In its 2010 ruling, the Court of Justice of the EU (CJEU) held that an advertising slogan can have the necessary distinctive character needed to constitute a trademark, if it is seen as more than an ordinary advertising slogan. The CJEU also advised that if the slogan is easily memorable, imaginative, surprising, unexpected, or is a play-on-words, it will have the necessary distinctive character to be regarded as a trademark.
Kit Kat’s ‘HAVE A BREAK’ slogan also overcame the hurdle of being non-distinctive, but in this case it was due to its long-standing use. In this instance, the Court of Justice confirmed that use of the slogan in conjunction with the registered ‘KIT KAT’ trademark is possible if the mark has acquired its own distinctiveness, through use. In response, Nestlé filed substantial evidence demonstrating the distinctiveness of the slogan, as use of the advertising slogan dated back to the 1950s.
Thus, a good advertising campaign showing substantial use over a number of years will help to overcome the hurdle of a slogan that is otherwise descriptive and non-distinctive, if the mark has acquired distinctiveness. However, short intense marketing campaigns for several months are unlikely to be enough to evidence this.
Designing slogans with trademarks in mind
A promotional slogan can also be considered registrable as a trademark in the EU if it indicates commercial origin. We recommend opting for unique, distinctive, catchy phrases that are easily distinguishable to allow consumers to identify the source of the goods or services.