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Can I Protect a Slogan as a Trade Mark?

by | Apr 22, 2021

Have a break, have a KitKat

Slogans can be one of your most powerful advertising tools. Adopting a slogan that is both catchy and memorable, can be a simple and effective way of allowing a business to draw in loyal followers, and establish a brand identity.

Yet, slogans are often refused registration and therefore protection as Trade Marks, unless they are accompanied by other distinctive elements that allow them to be perceived as being the property of a single owner/business.

So, can I protect a slogan as a Trade Mark? And what are the differences between slogans which can and cannot be registered?

The general rule is that Marks which are unadorned, purely informational, descriptive, generic, and/or promotional as to the positive attributes/benefits of a product or service, are unlikely to be registrable or protectable.

On the other hand, the more inventive, unique, and allusive a Mark is in relation to the goods and services concerned, the more likely it will be registrable. The following examples highlight some slogans which were successfully registered, and then some which were refused registration as Trade Marks at the UK IPO and/or the EUIPO.

Examples of slogans that have been allowed registration:  

Example of a Good Slogan – No.1:

  • The Slogan – ‘The Fruit, The Whole Fruit, And Nothing But The Fruit”
  • Goods/Services – This slogan (Mark) was registered for Fruit Juice.
  • Reason for Acceptance – As you can see, this nice slogan is a play on words, and the Examiner felt this was distinctive enough to allow registration.

Example of a Good Slogan – No.2:

  • The Slogan – “For Soldiers”
  • Goods/Services – This slogan (Mark) was registered for Egg and Egg Products.
  • Reason for Acceptance – Similarly to the above reason, this was also seen as being a nice play on words, and was allowed to proceed to registration.

Example of a Good Slogan – No.3:

  • The Slogan – “Natural Just Got Sexy”
  • Goods/Services – This slogan (Mark) was registered for Clothing, Footwear, and Headgear.
  • Reason for Acceptance – The Examiner saw this slogan as being nicely imaginative, and allowed it through to grant.

Example of a Good Slogan – No.4:

  • The Slogan – “Tousle Me Softly”
  • Goods/Services – This slogan (Mark) was registered for Hair Preparations.
  • Reason for Acceptance – Again, as Example 3 above, the Examiner saw this slogan as being sufficiently distinctive, and allowed it through to grant.

Example of a Good Slogan – No.5:

  • The Slogan – “Vorsprung Durch Technik”
  • Goods/Services – This slogan (Mark) was registered for Vehicles.
  • Reason for Acceptance – The Examiner felt this was both memorable and imaginative. It was permitted and allowed registration.

Example of a Good Slogan – No.6:

  • The Slogan – “Have A Break … Have A KitKat”
  • Goods/Services – This slogan (Mark) was registered for Chocolate.
  • Reason for Acceptance – This is an interesting one, and Nestle was perhaps fortunate to secure protection for this slogan. The Examiner felt this was a common phrase, certainly the first part (‘Have A Break’). But, because it was accompanied by a distinctive feature which is able to act as a ‘badge’ of commercial origin (‘Have a KitKat’), it was seen as being allowable. As such, it was permitted registration.

Let’s now take a look at some examples of slogans which were refused protection.

Examples of slogans that were refused registration:  

Example of a Refused Slogan – No.1:

  • The Slogan – ‘Never Clean Your Shower Again”
  • Goods/Services – This slogan (Mark) was filed to protect Cleaning Preparations.
  • Reason for Refusal – It is clear to see this is not a ‘clever’ or imaginative slogan. This is something you might say in any normal conversation. As such, the Examiner was not impressed and saw this as plain descriptive language to the intended purpose of the goods. It was refused protection.

Example of a Refused Slogan – No.2:

  • The Slogan – “It’s Not Rocket Science”
  • Goods/Services – This slogan (Mark) was filed to protect Shoe Polish.
  • Reason for Refusal – Similarly to the above reason, this was refused for just being a common descriptive phrase.

Example of a Refused Slogan – No.3:

  • The Slogan – “An Eye For Detail”
  • Goods/Services – This slogan (Mark) was filed to protect Clothing.
  • Reason for Refusal – The Examiner saw this slogan as being a common descriptive phrase which may have meaning in relation to the characteristics of the goods. Therefore, it was refused.

Example of a Refused Slogan – No.4:

  • The Slogan – “Say It With Champagne”
  • Goods/Services – This slogan (Mark) was filed to protect Champagne.
  • Reason for Refusal – This is has a purely promotional meaning and/or is purely a marketing function. Again, the Examiner was not impressed, and refused this Mark.

Example of a Refused Slogan – No.5:

  • The Slogan – “Real People, Real Solutions”
  • Goods/Services – This slogan (Mark) was filed to protect Telemarketing, Computer Maintenance and Support Services.
  • Reason for Refusal – As with Example number 4 above, this was refused due to having a purely promotional meaning and/or a purely marketing function. Just not clever enough.

How can you improve your chance of success when protecting a slogan?

For your slogan to fare better in terms of registrability, make sure it is:

  1. Original, imaginative, paradoxical, surprising, thought provoking and unexpected; and/or
  1. Combined with a distinctive word and/or logo.

Ultimately, when it comes to registering slogans, the examination of each Application will be viewed on its own merits. The Examiner will take into account the nature and meaning of the slogan, as well as the nature of the goods or services for which registration is sought.

Registration aside, the adoption of a slogan can be very effective within a marketing campaign, and will create instant consumer recognition. The benefit of choosing a slogan which can be registered is to provide you, the owner, with an easily enforceable right. It will stop competitors from encroaching upon your branding, and establish a unique position within your marketplace.

The protection of any Trade Mark can be complex and multi-faceted. If you would like further information or advice on registering slogans, or for any other Trade Mark related advice, please contact the highly experienced Trade Marks team at Albright IP via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you. 

 

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