Registering Slogans as Trade Marks

It can be difficult to advise on whether slogans can be considered sufficiently distinctive to obtain trade mark protection. Further to our recent article reporting on the practical difficulties associated with registering slogans as trade marks in the EU, the EUIPO Boards of Appeal has published a case-law research report on the distinctive character of slogans. Due to the growth in popularity of slogans as a marketing tool by companies, this is welcome and helpful guidance. We review the key takeaways and practical tips for brand owners.

What is a slogan?

From JUST DO IT by Nike to I’M LOVIN’ IT by McDonalds, slogans are catchy phrases that can be powerful marketing tools. In general, signs consisting of advertising slogans convey a promotional message in connection with the designated goods and services.

The factors of assessment

An application will not be refused by the EUIPO solely on the basis that it is a slogan. Instead, a slogan can function both as a promotional formula and as an indication of the commercial origin of goods and services. According to EU case-law, the following factors may serve to establish the distinctiveness of a slogan:

• It has a number of meanings

• It constitutes a play on words

• It introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected

• It has some particular originality or resonance, and/or triggers in the minds of the relevant public a cognitive process or requires an interpretative effort

• It has unusual syntactic structures and/or linguistic and stylistic devices such as alliteration, metaphors or rhymes.

In a decision by the Court of Justice of the EU (ECJ), a case involved an application for Vorsprung durch Technik, meaning ‘Advance or advantage through technology’. The application was filed by Audi AG for a wide range of goods and services. The ECJ held that the presence of several of the above factors gave the sign a sufficient degree of inherent distinctiveness. As a result, it could be registered as a trade mark. In that case, the Court clarified that a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services.

Other case-law

The General Court of the EU has recently rejected applications for the following:

• “We’re on it” protecting a wide range of goods and services in various classes, such as machinery, stationery, services of installation of air conditionings, advertising and business management. The Court held that the sign is a simple, clear and unambiguous expression which does not require an effort of interpretation, nor does it trigger any cognitive process in the mind of the relevant public.

• “GoClean” protecting toilet cisterns, toilet bowls and water distribution systems in Class 11. This was on the basis that the relevant public will not need to make any interpretative effort to understand the phrase “go clean” as an expression inciting to purchase and emphasising the attractiveness of the products in question, addressing consumers directly and inviting them to purchase.

On the other hand, the General Court of the EU has held that the following slogans are sufficiently distinctive:

• “Wet dust can’t fly” protecting cleaning products in Class 3, vacuum cleaners and power-operated floor scrubbers in Class 7 and repair and maintenance of vacuum cleaners in Class 37. This was because, among other reasons, the concept of “wet dust” is literally inaccurate, as dust is no longer dust when it is wet. The juxtaposition of those two words gives that concept a fanciful and distinctive character.
• “Love to Lounge” protecting clothing, footwear and headgear in Class 25 as the mark conveys an abstract message and requires some cognitive effort on the part of the relevant public. In addition, it has a certain originality which is likely to be remembered by consumers.

Key take aways

The cases set out above demonstrate that it is sufficient for a slogan to be registered as a trade mark in the EU if it sets off a cognitive process in the minds of the relevant public. This process must make the slogan easy to remember. It must also make it possible to distinguish the applicants goods and services from those that have a different commercial origin. It is not necessarily fatal if the relevant public perceives the slogan as a mere promotional formula. Rather, if that public simultaneously perceives the slogan as an indication of the commercial origin of the goods or services then the slogan will be deemed to be distinctive. Arguably, it is a fine line between merely promotional slogans and those that simultaneously perform the function of distinguishing the commercial origin of goods and services.

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