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

Last Updated: 12 January 2005
Article by Sara Elwyn Jones

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).

Background

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.

Practical Considerations

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.

Other forms of protection

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions