Registering a slogan as a trade mark
For any business, a slogan can become a key element when trying to establish a strong, unique advertising campaign. The obvious intention of that business is to hope that consumers will associate the slogan with their product or service and then go further to make a parallel connection with their brand. This can provide a somewhat ‘cult’ following which has been seen through advertising campaigns such as ‘Specsavers’ and ‘Kit Kat’, increasing brand awareness and of course sales and profits. It therefore seems needless to emphasise how important it is for a slogan to be protected by way of a trade mark registration.
However, it is not as easy as that. Numerous brand owners throughout Europe are finding it increasingly difficult to protect their slogans as many are deemed as purely descriptive of the products in question, or perhaps they just lack the necessary distinctive element. It is therefore worth noting that EU legislation makes quite clear that if the slogan lacks distinctiveness or is deemed as an exclusively descriptive term, it cannot be registered. What is necessary is that the slogan has the capacity to distinguish the goods of one undertaking from those of another undertaking.
An example of a slogan which was deemed unacceptable is the one which reads “where all your favourites come together” and was one which was applied for in relation to chocolates. The UK Trade Mark Registry decided to reject this application on the grounds that it was “just a sequence of common dictionary words” which “would easily come to mind in order to convey a promotional message for confectionary”. It is thought that the overall rationale of the Registry is that if the slogan has a neutral origin that is, it gives no guarantee about the trade source but simply informs consumers about the nature of the goods or services, it is not distinctive.
There are ways and means of overcoming such difficulties and a way of doing so is by proving that the slogan which the business or individual is looking to protect has acquired a “secondary meaning” on its own merit. A slogan is thought to have acquired a secondary meaning if the brand owner can demonstrate in the trade mark application that the use of this slogan by another party would cause confusion amongst customers as to the producer or provider of the goods or services.