Mon 16th Jan 2017
Can slogans be registered as trade marks in the UK or EU?
If you, or your brand agency, have spent days, or even weeks, drafting the perfect slogan for your business or product, then you may wonder if it’s possible to protect this element of your branding.
In principle, a slogan can be protected by registration as a trade mark as long as it’s distinctive, it’s not descriptive, nor generic and it’s not already registered in your chosen classes. You can then prevent any other company using your slogan on certain goods and services. Well known slogans that have been registered include JUST DO IT, BECAUSE I’M WORTH IT, and GIVES YOU WINGS.
Where a slogan has achieved strong market recognition after several years of investment in marketing, then it may also be possible to obtain trade mark protection for less distinctive slogans such as DOES EXACTLY WHAT IT SAYS ON THE TIN on the basis of acquired distinctiveness – even if it does not fulfil the usual criteria for a trade mark.
Ensure your slogan is distinctive
If the slogan contains a distinctive, invented word mark or a distinctive logo, that should enable the trade mark to be seen as inherently distinctive as a whole. For example, BEANZ MEANZ HEINZ and THE CAR IN FRONT IS A TOYOTA.
The authorities consider whether a trade mark is devoid of any distinctive character and will consider whether it is likely to involve any kind of interpretation or thinking on the part of the consumer. They will look for any originality, any element that is surprising or imaginative, whether it is a play on words or has a number of meanings, has unusual syntax or alliteration, and rhymes. Slang, or the omission of grammar, may not be sufficient to make a slogan distinctive.
Slogans might be seen as nondistinctive if they simply comprise a consumer service statement, such as ‘more than just a card’ for credit card services, or are basic promotional laudatory expressions, such as ‘Save our earth now’.
They can also be considered nondistinctive if they are essentially inspirational motivational statements, indicating the value of the services involved, or they are common phrases such as ‘an eye for detail’. Changes in wording and using words out of context, or imaginatively will all help.
Ensure your slogan is NOT descriptive
Slogans must not be wholly descriptive of the purpose, quality, kind or other characteristics of the goods. Messages that directly refer to the purpose of the services are likely to be refused, such as ‘never clean your shower again’.
Unfortunately, slogans are often too descriptive, generic or devoid of any distinctive character. The courts have said that it is not appropriate to apply stricter criteria to slogans than in respect of ordinary brands, but consumers may be slower to realise that they are trade marks.
Slogans must indicate a commercial origin of the goods and services, even if they also have a promotional role, such as CARLSBERG – PROBABLY THE BEST BEER IN THE WORLD and NO FT, NO COMMENT.
An application for the German language equivalent to ‘we make special (things) simple’ was considered devoid of any distinctive character for computer goods. The court felt that the public's perception might differ for slogans, such that it may be more difficult to show distinctiveness, but the fact that a slogan did have a promotional nature might not mean that refusal was appropriate. It was noted that standard German grammar and syntax were involved and the mark was refused as being a basic advertising message.
Build market recognition
If you really love your slogan, but it does not meet the criteria for trade mark registration, then you could consider trying to build up your rights in the slogan in combination with a distinctive word or logo, while you build up exclusive reputation rights.
You can then look at seeking to register the mark based on acquired distinctiveness once an exclusive goodwill has been built up over several years.
Ensure you are not using another company’s slogan
When you have a short list of potential slogans, you should ask your Chartered trade mark attorney to carry out a search to make sure it has not been registered by others.
For further advice
The protection of a slogan can be complex, and it is advisable to work with your Chartered trade mark attorney as soon as you have a shortlist of possible slogans – as each case will depend upon its various attributes.
Please do not hesitate to contact us at firstname.lastname@example.org, if you would like further assistance in protecting any aspect of your branding.
This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis and answer any questions you receive from others about Brexit. Please note that the law may have changed since the date this was first published in January 2017.