Are slogans registrable as a trade mark? An explanatory note:
Written by Mark Reed on 08 October 2018« Return to Reading Room
We occasionally get enquiries through the office to register a slogan as a trade mark. The first question we are asked is if this is possible? So I thought I would write an explanatory note outlining the Intellectual Property Office’s position on whether they can be registered and on what ground.
Firstly, lets briefly go back to basics…….
The examiner will examine your proposed trade mark to ensure that it functions as a trade mark. A mark will be deemed as able to function as a trade mark if it is able to distinguish the goods / services of one undertaking from those of another and that it is not wholly descriptive in nature. It may be refused out right if it lacks distinctive character and / or is purely descriptive of the goods or services of the trade mark. Specifically, the main function of this objection is to exclude trade mark applications that do not fulfil the ‘distinguishing function’ of a trade mark. The primary function of a trade mark is to allow the average consumer to be able to indicate the commercial origin / undertaking associated to the services. If this does not exist, the trade mark’s fundamental function is not fulfilled and therefore the trade mark is devoid of distinctive character. Equally, a mark cannot consist of either customary language or that are descriptive of the services applied for to be registered. This is to prevent one owner claiming a monopoly in a combination of words that are either customary or descriptive.
What this means for slogans
This is the same for a slogan to a degree. They are registrable providing they are distinctive and/or not descriptive. The UK Intellectual Property office neatly outlines a number of examples of slogans that have been accepted such as ‘GOING YOUR WAY’ as a taxi service due to it only being a casual link, or ‘NATURAL JUST GOT SEXY’ for clothing which was deemed as imaginative.
There is a number of case law that have explored the registrability of slogan marks due to the marks arguably not traditional trade marks. In fact, it is argued that it could draw the attention away from the basic legal requirement for the designation as a whole to be capable of functioning effectively as a stand-alone trade mark. Of many cases which deliberate on the registrability of slogans, the Audi AG v OHIM (C-398/08, which is also known as the ‘Vorsprung durch Technik’ case explored the public perception of different categories of marks may not arrive at the same conclusion and could be argued as more difficult to establish distinctiveness and necessary characteristics such as ‘imaginative’ or having ‘originality’. They said that “it should be noted that, although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan has distinctive character, as is apparent from paragraph 39 of the present judgment, the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character.”
These considerations highlight the complexity of the trade mark registration process, but also how interesting it is. This is a very small snippet of the things that are taken into account by the examiner but also shows how much more difficult it may be to have a slogan registered.
Keep monitoring our Reading Room for more explanatory notes on trade mark registration.
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