When people think trade marks, they generally think words (brand names) and logos. They seldom think slogans, by which I mean those "pay-off lines" or "positioning statements" that companies so like to use with their products. Terms like A Taste For Life, You Always Get Something Out and Connecting People.
Most companies use slogans these days and they do so because their branding people tell them to. Because, say the ponytails, a slogan can capture the brand's promise or essence in just a few words. These slogans may, however, also perform a trade mark function. That is because, although you are highly unlikely to ever ask for a product by its slogan, you may make certain assumptions when you see it in use.
If, for example, you went to a small cellphone repair shop and saw the slogan Everywhere You Go displayed prominently in the shop, you might well believe that there was some business connection with MTN, and that the business was an approved MTN dealer.
The law has long recognised this, and for many years companies have been registering slogans as trade marks. As with any other trade mark, the slogan must be capable of distinguishing the product of one company from that of another, either because it's inherently distinctive, or because it has become distinctive of the company's product through significant use. Yet the courts, especially those in Europe, have, over the years, struggled somewhat with slogans. And because European trade mark law is very similar to South African trade mark law, European decisions are very influential here, especially given the relatively few trade mark cases that are heard by the South African courts.
Some of the European decisions were pretty predictable. It was, for example, held that the slogan Visible White was non-distinctive in relation to toothpaste and therefore not registrable, and that the slogans A New Alternative and New Look were non-distinctive in relation to any product and therefore not registrable. On the other hand, the EU authorities held that Audi's famous slogan Vorsprung Durch Technik (Progress Through Technology) – being imaginative, surprising and unexpected – was distinctive and therefore registrable, and the UK authorities held that the slogan No Half Measures was sufficiently distinctive to be registered by Coca-Cola.
A few eyebrows were raised when Nestlé's slogan Take a Break was refused, but the decision was well-reasoned: the court said the slogan was not inherently distinctive because it was one of those terms that any chocolate manufacturer might reasonably want to use, and it had also not become distinctive because Nestlé had never used it on its own – Nestlé had, of course, always used it in the form Have a Break, Have a Kit Kat, and that slogan was registered.
But in one well-known case dealing with the slogan Delivering the Essentials of Life, the European authorities held that a phrase as non-distinctive as this was simply not capable of performing the essential function of a trade mark, which is to identify the commercial origin of the product so that the purchaser can repeat or avoid a further purchase depending on the impression made. Although the court confirmed that a slogan can be registered, it did say that the slogan must be perceived as an indicator of origin.
A similar line was taken in a later case involving the slogan that was the German equivalent of The Principle of Comfort, where the court said that slogans are perceived differently from brand names. This led many to believe that the test for slogans was different from the test for brand names – that it was first necessary to show that the slogan would be perceived as a trade mark, and then that it was in fact distinctive.
A very recent decision by Europe 's highest court, however, has clarified things a bit. The court ruled that the slogan that was the German equivalent of We Make Special Things Simple, and that was used for computer-related goods, could not be registered. But the court did emphasise that slogans are not a different category of marks from brand names, and that there are not two separate hurdles to overcome when it comes to registering slogans, namely showing that it is perceived as a trade mark, and then showing that it is distinctive. Instead, said the court, the test is exactly the same as it is for brand names: if the slogan is laudatory (complimentary), or in some other way non-distinctive, it won't be seen as an indicator of origin, so it won't be registrable.
So can we register slogans? To borrow that extremely well-known political slogan, Yes We Can. As with brand names, if the slogan is highly original, it might get through without any evidence of use. But if, as is so often the case with slogans, it is laudatory or in some other way weak, significant evidence of use will be needed. Therefore, as with other types of trade marks, it is always a good idea to create slogans that are unusual and interesting. Ilse du Plessis is a director in ENS's IP department.
Previously published in the LEGAL TIMES - Friday August 3, 2012
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