UK: SLOGANS: Can They Be Registered As Trade Marks?

A trade mark is a trader’s badge of quality for its product or service, and a registered trade mark is a powerful legal right for its owner, who can prevent similar marks being used for similar goods. In some circumstances, possession of a trade mark can stop the use of a similar mark on dissimilar goods if the mark has a special reputation.

Brand owners pay considerable amounts to advertising and marketing agencies to devise catchy slogans in order to promote and advertise their products and to leave their key brand message in the mind of the target audience. But to what extent can they protect their investments and register these valuable slogans as trade marks?

The European Court of Justice (ECJ) recently ruled on the registrability of slogans as trade marks in Office for Harmonisation in the Internal Market v Erpo Möbelwerk GmbH (Case C-64/02). The case is the latest in a line of recent cases that have dealt with the issue of slogans as trade marks and will hopefully further clarify to brand owners which slogan-type marks have a reasonable chance of successful registration as Community Trade Marks (CTMs).

The German company, Erpo Möbelwerk GmbH (Erpo), applied to register the slogan ‘daz Prinzip der Bequemlichkeit’ (‘the principle of comfort’) as a CTM for various classes of goods, including in particular furniture. The Office for Harmonisation in the Internal Market (OHIM) Examiner rejected the application on the ground that the word combination (i) designated a characteristic of the goods concerned, and (ii) was devoid of any distinctive character. Erpo appealed against the decision.

The OHIM Third Board of Appeal annulled the Examiner’s decision to the extent to which he had rejected the claim for products in Class 8 (tools (hand-operated); cutlery). For the rest, the Board of Appeal dismissed the appeal on the ground, in essence, that the phrase in question did not meet the requirements of Article 7(1)(b) and (c) and (2) of the Community Trademark Regulation (Regulation No 40/94), i.e. the mark applied for was:

• devoid of any distinctive character, and
• consisted exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service i.e. it was descriptive.

The European Court of First Instance (CFI) rejected the decision of the Board of Appeal and held that ‘daz Prinzip der Bequemlichkeit’ did not consist exclusively of signs that may designate the quality of the goods concerned. Also the Court decided that in requiring a slogan to display an ‘additional element of imagination,’ or ‘conceptual tension,’ OHIM had incorrectly interpreted ‘distinctive character’ within the meaning of the Community Trademark Regulation. The Court held that it was not appropriate to apply criteria to slogans that are stricter than those applicable to other types of marks."

The European Court of Justice

The ECJ confirmed the findings of the CFI but did not agree with all of the grounds. In its judgment the Court gave some useful guidance on the registrability of slogans as trade marks:

• The ECJ made it clear that while the public’s perception of different types of marks may not always be the same, and for this reason it may be more difficult to establish distinctiveness for some categories of marks, it is wrong to impose a stricter test for assessing the distinctiveness of trade marks consisting of advertising slogans. The criteria for assessing distinctiveness must be the same for all types of marks.
• However, when assessing the distinctiveness of a slogan that extols the quality of the product in question, the examining authority may take into consideration of the fact that the public could regard the phrase merely as an advertising slogan as opposed to a sign guaranteeing the origin of the product (a trade mark). The Court acknowledged that the average consumer may not be in the habit of making assumptions about the origin of products on the basis of such slogans.
• The Court reaffirmed the strict test laid down by it in Libertel Groep BV v Benelux-Merkenbureau (Case C-104/01): examination of applications for registration must not be minimal but must be stringent and full in order (i) to prevent trade marks from being improperly registered, and (ii) to make sure that, for reasons of legal certainty and sound administration, trade marks whose use could be successfully challenged before the courts are not registered.

So, OHIM may no longer insist that in contrast to word and figurative marks, slogan-type marks must include an additional imaginative element to acquire distinctiveness. There is no doubt that the ECJ’s ruling is a blow to OHIM, and, as a result of this judgment, it may now become easier to protect slogans as trade marks.

So what are the issues to consider when faced with the question of the registrability of a slogan as a trade mark?

• The first issue to consider is whether the trade mark applied for consists exclusively of a sign which may serve, in trade, to designate characteristics of the goods/services to which the mark will apply, including intended purpose. If a slogan is purely descriptive, it is highly unlikely that it will be accepted for registration, at least not as a simple slogan on its own. The following applications have been rejected by OHIM: LOOKS LIKE GRASS … FEELS LIKE GRASS … PLAYS LIKE GRASS for synthetic playing surfaces for various sporting activities.
• If other traders are already using the slogan in trade as a description of the goods and services (for example, in advertising), the application will probably fail.
• Slogans which include the applicant’s trade mark will not consist exclusively of a sign which may serve, in trade, to designate characteristics of the goods and services to which the mark will apply, including intended purpose. For example, the mark VOLVO FOR LIFE for various classes of goods has been accepted as a trade mark by OHIM.
• If the slogan is a term that could be used by others in the trade, even if not in a descriptive sense, then the application will fail on the ground that it is not distinctive because such statements will not be considered as a badge of trade origin by the average consumer. Such slogans are innately promotional. The question is whether the slogan is being used in the same manner as the brand name, that is, if it is being used to identify the source of the goods or services. So slogans such as 'Simply the best' or 'The natural choice', can be used freely by traders without risk of infringing third party trade marks. By way of illustration, the following slogans have been rejected by OHIM: "THE WORLD LEADER IN TELEPHONE MARKETING SOLUTIONS" for various services including advertising and research; "SOURCE FOR POWER WORLDWIDE" for goods including industrial engines; and, "DEDICATED TO HELPING OUR CLIENTS PERSUADE DECISION MAKERS" for services including consulting services.
• Unless the slogan is in itself inherently distinctive and qualifies as a mark in itself, OHIM will require that the slogan be identified with the product or service so that the public, on hearing the slogan, relates it to the particular product or service. The applicant must therefore demonstrate that the mark has acquired distinctive character through use.
• Where a slogan is original and imaginative and/or ambiguous in respect of the goods or services concerned, it has a greater chance of being accepted for registration. For example, "JUST DO IT" for sportswear; "FRÜHER AN SPÄTER DENKEN!" ("Start thinking about later earlier") for assets consultancy and financial services; and, "MAKE BEER NOT WAR" for a variety of goods and services including clothing, beers and advertising, have all been registered as CTMs.

The chances of obtaining registration for a slogan that contains a distinctive word, a pun or unusual use of a certain word in a certain context are good. So the message is clear: if companies want to obtain trade mark protection for their slogans they need to devise slogans that are unique and non-descriptive, as well as slick and catchy.

Fundamentally it all boils down to an assessment of the distinctiveness of the slogan i.e. assessing the capacity of the mark to serve as a badge of origin in the perception of the average consumer of the goods and services in question. A slogan that uses commendatory terms to promote the product concerned, or aspects of it, will not generally identify a particular trader. Rather it will be viewed by the public as merely ‘informational’ or ‘generic,’ or as promoting the benefits of the product category generally and therefore not capable of distinguishing one particular product or service from another. The registration of slogans as trade marks is possible, but generally registration of slogans containing laudatory terms will only be achieved if the applicant can demonstrate that the slogan has acquired distinctiveness through use.

However, it must be remembered that all is not lost if trade mark protection cannot be obtained for a slogan. Even if a slogan cannot be protected as a trade mark, the law can protect such slogans in other ways. There may be unregistered trade mark rights based on common law principles, such as passing-off, where a reputation in the slogan in question has been acquired. Also, there are a number of advertising codes that prohibit advertisers from taking unfair advantage of the reputation of trade marks, trade names or other distinguishing marks of other organisations (i.e. the British Code of Advertising, Sales Promotion and Direct Marketing of 4 March 2003), of which brand owners need to be aware.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.