17 February 2016

Slogans - Can They be Trademarks?

Slogans - Can they be trademarks?

You will be aware of trademarks that brands register in order to obtain protection for a brand (and for the investment that has been made in the brand and its brand “equity”). What is often the case is that a number of brands have made considerable investment in slogans. Some almost form part of everyday language – Nike’s “Just do it”, Coca Cola’s “it’s the real thing” are obvious examples. There are numerous examples that have less ubiquity but still have considerable investment.

There was a time that there was some confusion about the ability to register these slogans as a trademark. All of the usual rules for trademark registration applied – that is distinctiveness, non-descriptive, and importantly denoting origin. But there was some notion that the courts required the brand owner to demonstrate that the slogan would be perceived as a trademark. Given the real difficulty with this, it was an approach that was both confusing and controversial.

Happily the issue has been made clearer and slogans can be registered as a trademark provided that they meet the requirements of registration (more on this in a minute) and the idea that there had to be a perception of the slogan as a trademark has been done away with.

Before one rushes into registration (and the expense of doing so), one needs to consider the slogan. Questions such as “is it distinctive?” “Does it indicate origin?” need to be clearly answered in the affirmative before one should attempt registration.

A Few Examples:

“Visible White” in relation to toothpaste has been refused registration as being insufficiently distinctive, as did (somewhat controversially) Nestlé’s attempt to register “Take a Break” (although “Have a Break, Have a Kit Kat” was successfully registered).

On the other hand “Vorsprung Durch Technik” for Audi was described as “imaginative, surprising” and “unexpected” and so was allowed to be registered as a trademark.

And to be clear, any slogan to be registered as a trademark must perform the essential function of a trademark, namely denoting origin.

Alex Lee

Alex Lee