Every Little Helps: How To Protect Your Slogan As A Trade Mark

Introduction

Slogans can be powerful advertising tools, especially if the public becomes familiar with them and they become synonymous with a product. Much of the general public cannot hear "Have a break..." without thinking of Kit Kat chocolate bars, for example. Naturally brand owners seek to protect their brand investment by stopping others from using these phrases, with the intention being that they will be seen as belonging to their brand alone. Whether they can do this is largely dictated by trade mark law.1

In principle, a trade mark can consist of any 'sign' capable of being represented graphically, provided it can distinguish the goods of one undertaking from those of another. This includes words and logos, but can also include colours, sounds and slogans. However, in order to be registered the sign must have distinctive character and it is this requirement that frequently poses a problem for slogan applications.

How is distinctive character assessed?

If a trade mark lacks distinctive character, it cannot distinguish the goods of one undertaking from those of another. Distinctive character is assessed both by reference to the goods or services applied for, and by reference to the relevant public's perception of the mark. In some cases it can be proven by showing a mark has acquired distinctiveness as a result of the use made of it.

The test for whether a slogan (or any other similar statement) has distinctive character is the same as for any other sign. However, in practice consumers are less likely to recognise a slogan as functioning as a trade mark. A slogan cannot be excluded from registration simply because it has been used in a promotional or laudatory way, but if the relevant public perceive it as functioning solely as an advertising message, then it will lack distinctiveness.

Recent European Cases

The recent decision of the Court of First Instance in T-523/09 Smart Technologies ULC v OHIM (2011) considered the registrability of the word mark WIR MACHEN DAS BESONDERE EINFACH ("we make special (things) simple"). In doing so it confirmed that the following principles were relevant to the registration of slogan marks:

it is inappropriate to apply stricter criteria to the registration of slogan marks than to the registration of any other mark, no new or modified tests for distinctiveness are justified a slogan is not excluded from registration merely because it contains indications of quality, or incitements to purchase the...

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