Slogans ' Can They Be Registered As Trademarks?

• Published date: 14 November 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: aera
• Author: Aera Firm

On EU-level it depends on whether your slogan is merely perceived as a promotional formula or if it is also considered an indication of commercial origin - if the latter is the case, then the answer is yes, your slogan can be registered as a trademark.

A trademark's purpose is to indicate the origin of specific goods and services and thereby allow the consumers to distinguish between different undertakings. In order to fulfill this purpose, a trademark must have distinctive character.

This is where it gets a bit tricky for slogans (compared to i.e., logos) since slogans, rather than being perceived as indicators of origin, are generally perceived by consumers as nothing more than commercial instruments in the marketing of goods and service. For this reason, slogans are struggling to meet the legal requirement of distinctive character.

Over the years, there has been uncertainty about which factors are the determining factors when assessing if a slogan has sufficient distinctiveness to be registered as a trademark.

In order to provide certainty and enhance the consistency of the decision making on EU level in regard to slogans, EUIPO released a report¹ last year (2021) which compiles existing case-law from the General Court, the Court of Justice and the Boards of Appeal on the subject as well as guidance on the assessment of the distinctiveness of slogans.

The report from EUIPO has provided us with the following list of factors which may serve to determine if a slogan has distinctive character.

The slogan:

• has a number of meanings
• constitutes a play on words
• introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected
• has some particular originality or resonance, and/or triggers in the minds of the relevant public
• has unusual syntactic structures and/or linguistic and stylistic devices such as alliterations, metaphors, rhymes

However, none of these factors apply in absolute terms, meaning that distinctiveness cannot necessarily be established solely on the ground that a slogan has a number of meanings, and on the other hand a slogan is not necessarily devoid of distinctive character if it does not constitute a play on words. The assessment should always be conducted on a case-by-case level.

In the case 'Vorsprung durch Technik'² (Meaning inter alia 'Advance or advantage through technology'), the slogan was applied for trademark registration for a wide range of specific goods and services...