Can you trade mark a slogan?

The question of whether you can trade mark a slogan is a good one to consider, and it’s particularly pertinent given that the EU Intellectual Property Office (“EUIPO”) has recently published a report on this very issue. The report, entitled ‘The Distinctive Character of Slogans’, seeks to clarify what is and isn’t registrable in the slogan world. But, before we come onto this, let’s first explain the problem faced when registering a slogan as a trade mark.

What is the problem with registering a trade mark as a slogan?

Essentially when applying for a trade mark registration you don’t just need to come up with something that’s different to pre-existing marks. Instead, you also need to get over a number of initial “examination” hurdles. These are issues which, if not addressed, will result in an early refusal of your application. The two most common are descriptiveness and distinctiveness. You cannot register a trade mark if it simply describes the goods or services that you’re seeking to protect. Equally, you cannot register a trade mark if it lacks the requisite level of distinctiveness (broadly speaking, if it’s too generic) for protection.

It’s this second rule that often scuppers applications for slogans because they are often designed to be simple, easy to follow and recognisable, all of which can reduce their level of distinctiveness, ultimately leading to an application refusal.

How to get around this problem

So, what to do?

Well, the EUIPO has come up with a number of factors to help indicate a distinctive slogan. These are as follows:

1. It has a number of meanings;
2. It constitutes a play on words;
3. It introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected;
4. 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;
5. It has unusual syntactic structures and/or linguistic and stylistic devices such as alliterations, metaphors, and rhymes.

The EUIPO says that by applying these factors you will be able to distinguish between an insufficiently distinctive slogan and a distinctive slogan. It even gives some examples.

A phrase such as “We’re on it” is a simple, clear and unambiguous expression, it will be immediately perceived by the relevant public as an ordinary advertising message promoting the quality of the goods and services and, as such, isn’t distinctive.

On the other hand, a phrase such as “Wet dust can’t fly” is clearly already a bit odd and calls for an interpretative effort on the part of consumers. Therefore, it’s distinctive.

So, can you trade mark a slogan?

In short, it is possible to register a slogan as a trade mark, but there can be difficulties based on the distinctiveness of the slogan. Using the EUIPO’s factors, we can better determine which slogans are distinctive and which are not. Slogans that are distinctive by the EUIPO’s standards have a much better chance of being accepted as a trade mark.

A real-life example

Despite the EUIPO’s factors, the prevailing view still seems to be that consumers are not used to seeing slogans as badges of origin (because they tend to be generic or neutral statements) in the same way that they are used to seeing brand names and logos as badges of origin. As a result, it seems that slogans are in fact treated differently from other types of trade marks.

This issue arose recently when a beverage company sought to register the slogan “TAKE FIVE” as a trade mark in the EU covering mineral waters and other non-alcoholic drinks. The Examiner refused the application (and the Board of Appeal agreed with her decision) on the basis that the trade mark was insufficiently distinctive to function as a trade mark.

One of the points emphasised by the Board of Appeal was: “The public will understand that the expression is an invitation to potential customers to take or buy products in a quantity of five. The invitation conveyed could also refer to a variety of five different types or flavours sold in one pack. Such invitations to take or buy are commonplace. The present sign is a direct, obvious and also widely used advertising statement with “five” being used in the sense of a quantity specification. The public is familiar with receiving such form of advertising messages”.

This decision raises a couple of problems.

First, I would argue that the phrase “TAKE FIVE” has at least three potential meanings:

1. An invitation to take five of something (the meaning taken by the Board of Appeal)
2. A casual way of saying ‘to take a break’ (i.e. take five minutes)
3. To make a fifth attempt (i.e. directing/filing terminology)

On that basis, the “TAKE FIVE” trade mark satisfies at least one of the factors in the EUIPO report (i.e. the mark has a number of meanings), which should tend to indicate that it is sufficiently distinctive to be registrable.

Second, the decision indicates that the EUIPO does in fact apply stricter scrutiny to slogans than to brand names when it comes to assessing distinctiveness for the purposes of registrability. The same beverage company, around the same time, successfully registered the brand name “TAKE FIVE HARD SELTZER” as a trade mark in the EU covering hard seltzer. The application was accepted, even though the words “HARD SELTZER” are directly descriptive of the only good/product covered by the application. It follows, therefore, that the only element of the phrase enabling it to function as a trade mark (i.e. the only distinctive element) are the words “TAKE FIVE”. The main distinction appears to be that “TAKE FIVE HARD SELTZER” was perceived as a brand name, whereas “TAKE FIVE” was perceived as a slogan.

The key point to take away is that the process of securing trade mark registration is not always straightforward. There are multiple factors to take into account and as a result, decisions can be inconsistent and outcomes uncertain. To give yourself the best shot at success the first time around, take advice in advance so that you can assess the issues/risks involved and the likelihood of a successful application before you decide to go ahead.

Hopefully, this often murky issue is now a bit clearer and you’re ready to file a trade mark application. If that’s the case, the next step is to contact our team and speak to one of our friendly trade mark lawyers. We’re here to help!