Summary 

 In the United Kingdom and European Union, it is notoriously difficult to register slogans as trade marks. To stand a chance of success, brand owners must prepare their case with the expertise a sommelier and the fastidiousness of a master chocolatier. The bounty which awaits those who persevere is a significant increase in brand value.

What’s the law?

 Slogans are registrable as trade marks and subject to the same examination criteria as other marks – Henkel[1].  However, we are told that due to their use in advertising, consumers tend to see slogans as promotional statements rather than indications of origin – Das Prinzip[2].  Objections therefore tend to be raised under sections 3(1)(b) and (c) of the Trade Marks Act 1994 and Articles 7(1)(b) and (c) and 7(2) of Regulation 2017/1001 if the mark uses plain descriptive language or is a common phrase.

Where the promotional function is obviously secondary then the slogan will possess the necessary distinctive character to achieve registration.  However, a slogan which has a promotional meaning may also possess distinctive character – Audi[3].  A slogan need not be a ‘play on words’, imaginative, original, surprising or unexpected, although the presence of those characteristics is likely to endow that mark with distinctive character – Audi.

For example, “Das Best was ein Apfel werden kann”[4] (in English “The Best an apple can become”) has a clear meaning for German-speaking consumers in connection with fruit drinks, juices and syrups. As such, the EUIPO felt the mark did not stimulate any cognitive process and lacked ambiguity due to consumers being readily able to perceive the positive advertising statement.

Slogan trade marks may acquire distinctive character as a consequence of their use in conjunction with another mark – Have a Break[5].  The only requirement is that consumers recognise the mark as indicating the origin of the goods or services.

What are some examples of successfully registered slogans and lessons learned?

Some examples include:

Slogans, by their very nature, contain a broad message aimed at a wide audience. When those slogans are applied to common, everyday items such as food and drink, it is perhaps unsurprising that brandowners in this sector receive a substantial number of objections to registration. To avoid those then the trade mark must steer away from ordinary descriptive language which merely promotes the product in question.

For the best chance of registration, brandowners should present the words in an unusual way, for example by adopting a playful flourish. This ultimately adds distinctive character to the marks.

One alternative is to shorten the slogan. There are several examples of successfully registered slogans in the EU including “Queen of Green”, “Spirit of Summer” “Kiss the Cook” or “Licking for Freedom” all in relation to class 30 confectionary products.

A famous example of a mark registered in the UK is “I can’t believe it’s not butter” for margarine. On this instance, the slogan had the potential to be promotional yet retain its distinctiveness. More recently, some entrepreneurs have even tried to capitalise on Brexit as a marketing tool. “English Brexit Tea” has been registered for a range of different types of tea and for biscuits in class 30. On their own, the words have inherently descriptive components. However, on reflection it is not immediately obvious how tea can be “Brexit tea” and the mark is a playful twist on the traditional English Breakfast tea.

To summarise:

• Be as playful, imaginative, provocative and original as you can!
• Shorten the phrase
• Add a distinctive element, such as the core brand, to the slogan

In our experience, examiners at the EUIPO tend to struggle with English slogans more so than UK examiners. The subtlety of literary devices is less obvious where English is not the mother tongue, which means there is a better chance of registration for slogans in the UK than the EU. That also offers a competitive advantage for brands who look further afield to anglophone markets rather than over the Channel.

Why don’t we have a supplemental register?

Brandowners invest substantial resources in developing new slogans and there is clearly demand to register the phrases they create. We should also not forget that trade marks serve a public utility, which is to help consumers recognise a unique trade source. In that case, would it not be more helpful they were all recorded somewhere?

In the US, non-distinctive trade marks can be registered on the supplemental register if they are in use. This means that they will be revealed in trade mark searches and can be used in conjunction with the ® symbol which serves as a placemarker to educate consumers and competitors that the brandowner is using the slogan as an indication of origin.

How will trade marks be affected by Brexit?

Brexit represents a potential fork in the road for trade mark law in the UK and EU. Some political commentators speculate that the UK government will look for trade links across the Atlantic towards the United States of America rather than across the English Channel to the EU. Increased regulatory alignment for food and drink products between the UK and the US coupled with a dominant common language offers fertile ground upon which to sow the idea of a more harmonised trade mark system. Indeed, post-Brexit, Ireland and Cyprus will be the sole EU countries using the common law legal system; England, Wales and Northern Ireland share the same roots as the US. For UK brandowners, it may soon become much easier to register slogans in the UK than for their EU cousins.

[1] Henkel v OHIM, Joined Cases C-456/01 P and C-457/01 P

[2] Erpo Möbelwerk GmbH v OHIM, Das Prinzip Der Bequemlichkei’ [“The Principle of Comfort”], C-64/02 P

[3] Audi AG v OHIM, Vorsprung Durch Technik, Case C-398/08 P

[4] Kelterei Possman GmbH & Co. KG v EUIPO, Case R 2389/2018-1

[5] Société des produits Nestlé SA v Mars UK Ltd, Case C-353/03

Vishal Dattani

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Robert Cumming

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