Trade Marks for beginners
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Straplines and slogans – can they ever be trade marks?
Basic rules of registrability dictate that a proposed trade mark cannot describe the goods or services in respect of which registration is sought, and that it has at least some distinctive character in connection with those goods and services. While there is much debate on what distinctiveness actually means, and how much is enough, these two requirements essentially boil down to a registrable trade mark being able to differentiate the goods and services of the trade mark owner from those of other parties. In other words, it indicates commercial origin.
How is this relevant to straplines and slogans?
Marketing phrases are subjected to no different or stricter criteria than any other type of word or phase. In fact, there is an argument that a trade mark is a kind of marketing tool anyway, so why would there need to be any differentiation?
The point at which a marketing phrase becomes a trade mark happens when the slogan, strapline, or other marketing term is able to indicate commercial origin. This ability can be inherent, or it may be acquired over time. Slogans can become well known and inextricably linked to particular organisations, some high profile examples being Nike’s ‘Just do it’, McDonald’s ‘I’m lovin’ it’ and Audi’s ‘Vorsprung durch technik’, all of which are internationally registered trade marks that most consumers will immediately recognise as originating from a particular company. Their registration as trade marks is an effective acknowledgement that as well as being marketing tools, they perform the function of a trade mark. None of them were, however, immediately registrable: Audi’s original EU trade mark application, covering vehicles, had to wait for nearly four years before registration was eventually granted, while a later application covering a range of goods and services took more than eight years.
It is undeniable that slogans and straplines can be a struggle to protect. They naturally tend towards vagueness and generality, often being exhortations to eat or spend or travel, or statements concerning quality or price. A bold and positive statement about a new product that, from the marketing team’s perspective, ticks the right promotional boxes may be, quite simply, unprotectable. While registration may not be a priority for seasonal or temporary slogans, this is not necessarily so for longer term slogans, when the absence of a trade mark registration can make it difficult to stop other parties from using the same or similar words or phrases. Furthermore, where a phrase tends towards the descriptive or commonplace, it is much harder to build up any enforceable rights, as a link with the company cannot easily be established.
Can slogans and other marketing phrases ever be registered? Is there an optimal balance between promotional and protectable? What are the rules?
The UKIPO provides some guidance on what is not protectable in the UK as a trade mark, including:
· Straightforward and non-specific statements that could apply to any commercial organisation
· Words or phrases that are descriptive, or that lack distinctiveness in the context of the goods or services
· Statements that are purely promotional
· Exhortations to do something
· Laudatory statements or claims
How can I make my slogan into a registrable trade mark?
First, make it registrable from the outset by building in some distinctiveness. This could be in the form of a mis-spelling, an unusual or unexpected combination of words or a play on words, or by incorporating a distinctive element such as the company name. A slogan that possesses at least a minimal degree of distinctiveness is more likely to be accepted as an indicator of commercial origin, and be granted registration.
In the case of a slogan that just isn’t registrable, all is not necessarily lost. Registrability can grow through use. Audi eventually managed to register its slogan ‘vorsprung durch technik’ as an EU trade mark after demonstrating significant use of the term in many countries over a period of some years. The use showed that the slogan had, in practice, functioned as a trade mark, that is, as an indicator of commercial origin, and as a result was considered to have acquired distinctiveness. While distinctiveness is being built up in otherwise unregistrable mark, a common tactic is to register the slogan in combination with a distinctive element, often a verbal element such as the company name, or a logo or other decorative element. Although this means that the initial protection will be for that particular combination of elements, having the slogan on the trade mark register in any format can have a useful deterrent effect. Once the slogan has been used for a reasonable period of time, a second application for just the slogan can be filed, supported by evidence of the distinctiveness acquired during the period of use.
What else do I need to consider?
Don’t fall into the trap of assuming that just because a slogan is descriptive, it is free to use! Treat it as you would any other trade mark, and do all the usual checks before making a commitment to a particular phrase or strapline.
Further advice
For further advice, please contact the trade marks team at Hindles.