The simple answer is maybe. It is important to be aware that slogans can be registrable provided that they have the ‘capacity to individualise the goods or services of one undertaking’ and ‘they are not comprised of signs or indications which directly describe the goods or services or their essential characteristics’ and are ‘not devoid of distinctive character for any other reason’.
The Law:
Under section s3(1)(c) of the Trade Marks Act 1994 ‘Slogans will face an objection if they are comprised of a word combination that an average consumer would regard as a normal way of referring to the goods or services or of representing their essential features’.
I will examine the implications of this and look at examples of where a slogan has been registered and where it has failed.
Plain Descriptive language
The Works Manuel provided by the UK Intellectual Property Office tells us that the slogan ‘NEVER CLEAN YOUR SHOWER AGAIN ‘(filed in class 3) was refused on the grounds that it described in plain language the intended purpose of the goods. The slogan ‘THE SHOES YOUR FEET HAVE BEEN ACHING FOR’ although it was obvious what the intended purpose of the goods were, passed the examination stage because the slogan was an unusual way of conveying a descriptive message.
Common descriptive phrases
A mark will be refused if it is common phrase in the relevant industry and designates not just characteristics to the consumer but also the quality of the goods. Therefore if a mark is composed of a well known phrase it will not result in a refusal unless that phrase also designates an essential characteristic of the goods or services in question. For example the mark ‘IT’S NOT ROCKET SCIENCE’ was accepted for shoe polish, as it was decided that you would not associate Rocket Science with shoe polish.
Ambiguity
The more ambiguous a slogan is the more prospects it has of being registered. The mark ‘NATURE’S REAL THING’ for foodstuffs in Classes 29 and 30 passed the examination stage because the reference to natural products was seen as being sufficiently allusive. Similarly a slogan which has two meanings will not be registrable if one of them is a description of the goods or services. The mark ‘WE SET THE HIRE STANDARD’ was refused for Car Hire, although there was a possible alternative phonetic meaning.
Normal use in advertising
It is generally accepted that in advertising it is customary to use short-hand when promoting the goods and service. However there are some limits as to whether a certain slogan will be regsitrable.The mark ‘WHERE ALL YOUR FAVOURITES COME TOGETHER’ for chocolate confectionery failed because it was an abbreviation for the longer expression ‘This is where all your favourites come together in one box’, however the mark ‘FROM THOUGHT TO FINISH’ although a play on a well known phrase ‘From Start to Finish’ was accepted for Classes 9, 16, 35, 41 and 42 because it was considered not to be a normal means of designating goods or services in the development field.
It has to be noted that even if a slogan is free from objection under section 3(1) (c) it may still fall foul of s 3 (1) (b) if it sends a message that could apply to any undertaking and is therefore not capable of individualising the goods or services of one undertaking, I have listed the following as an example of this:
Inspirational or motivational statements: Generally these types of slogans are considered to be non-distinctive particularly for services. However if it is an opaque reference and is in relation to goods then it has a better chance of being accepted. The mark ‘JUST DO IT’ was accepted for sports shoes.
Value statements: Are generally considered to be devoid of any distinctive character and usually will fail registration.
Customer service statements: Straightforward statements about customer services that could apply to any undertaking are also considered to be devoid of any distinctive characteristics and will fail registration. Others included in this category and are likely to fail this ground are slogans which are ‘purely promotional statements’ and ‘statements by/about the user of goods/wearer of clothing’.
Conclusion
In conclusion the answer is maybe but there are many pitfalls which an application could face. It is therefore recommended that you seek expert advice when considering registering your slogans.