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Slogans as trademarks: "It does exactly what it says on the tin"

Is it possible to register slogans in the same way you can register other marks, giving you exclusive rights of usage? If so, how do you do it and are there problems in doing so? By intellectual property and technology lawyer James Mitchell.

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Slogans or straplines are not new. They are as old as advertising itself, yet there is still confusion over the status of slogans. Specifically, whether it is possible to register slogans in the same way you can register other marks; so giving you exclusive rights of usage? If so, how do you do it and are there problems in doing so?

These issues and others were addressed recently in an opinion of the Advocate General (AG), arising from a Community Trade Mark application for the slogan The principle of comfort (translated from the German) with respect to use for, among other things, tools, cutlery, seating, chairs and other furniture.

The AG’s opinion made it clear that slogans can be registered in exactly the same way as any other mark and that the criteria required for registration are no different from those applying to any other word(s) or logo.

However, the opinion also demonstrated that slogans are particularly difficult to register as a result of their form. Slogans are often phrases which may be used in the normal course of business to refer to products or services generally or of the type for which registration is sought. For example, slogans like The finest for miles or Committed to you are capable of being used by anyone when describing their business or their goods and services.

This presents a problem because the Trade Marks Registry, both here and in the European Community, have a responsibility to ensure that such phrases are not registered. The principle is that no one ought to be given exclusivity in the use of such commonly used phrases or descriptive terms. To do so would place an undue restriction on the way other companies could represent, describe or promote their products or services. The AG also made it clear that for the purposes of refusing registration it is not necessary for the Trade Marks Registry to show the phrase is being used by others, merely that it may be used.

Contrast this situation with really good trademarks, such as Kodak, Amazon or Google. They are inherently meaningless in their context. This allows them to truly perform the function of a trademark – namely to indicate the true origin of goods or services. The word Amazon has no common, everyday connection with, for example, the sale of books or CDs, so that when used in this context, it indicates only one thing – that those goods or services came from that particular source.

In essence, the phrases used as slogans (which are a kind of special case of sales puff or promotion-speak) are too loaded with meaning and too likely to be commonly used to qualify as trademarks. The AG also made it clear that slogans are more likely to be associated with the type of product (e.g. sealant or washing-up liquid) rather than one particular product – making the usage inconsistent with the function of a trademark.

All in all, this makes registration of slogans difficult – but not impossible. If the slogan you use is unusual, is not used by others and is not likely to be used for the goods or services you sell, then you have a decent chance of registration. Otherwise, the best route to get around the Trade Mark Registry objections is by demonstrating acquired distinctiveness through use.

This means showing that your slogan has superseded its everyday use and, in the mind of consumers, calls to mind your goods and services rather than those of your competitors; for example, the slogan It does exactly what it says on the tin calls to mind one particular product and no other. It no longer has a common meaning but rather a special meaning, associated with particular goods or services. If you can say the same of your slogan, and provide evidence to support your view, you have reached the point when it is time to consider registration.

© J.P.Mitchell, 2004.

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