In one of the most famous scenes of the show Mad Men, advertising mastermind Don Draper has to pitch his ideas to Kodak execs to help them sell their brand-new Carousel, which they want to advertise as highly modern.
"This device isn't a spaceship, it's a time machine. It takes us to a place where we ache to go again" says Don Draper with the winning line. Clients are delighted, and so are the viewers.
Pitches and promotional messages are as old as advertising. Slogans and taglines are part of our everyday lives as consumers – from “Just do it” to “Think different” or “I’m Lovin’ it”, most of us have memorised them and know exactly which company they are calling to mind. Slogans are a catchy way of promoting a product, a service or a company, showing it in a positive light and ensuring that the message “sticks” in the minds of consumers. It is therefore quite logical that companies seek to register them as trade marks, to ensure exclusivity over their use in trade.
For this month’s blog post, we have decided to take a look at the principles applied by the European Union Intellectual Property Office (EUIPO) when it comes to the registration of slogans as EU trade marks.
In order to be accepted, any EU trade mark application must meet a number of conditions. Inter alia, the sign applied for should fulfil the conditions of article 7 of the EU trade mark regulations (EUTMR) – if not, the application will be rejected on absolute grounds. According to two of these absolute grounds, a sign should not be descriptive, and should be distinctive.
All trade mark applications have to comply with the same set of rules, so the assessment of slogans and promotional messages is not subject to stricter rules than for other types of signs. However, their case is singular and raises more issues than other types of registrations, for two main reasons.
On the one hand, as highlighted by EUIPO in its case law report on this topic, the perception of slogans by the public is not always the same as for other types of marks. The primary purpose of a trade mark is to indicate the commercial origin of a product or service on the market, and hence to differentiate this product or service from those commercialised by other undertakings. The issue with slogans is that the average consumer does not necessarily see slogans as indicating a commercial origin – but rather sees them as a positive, promotional message, hence as a mere form of advertising.
On the other hand, slogans are often used to refer directly to the quality or positive features of goods and services, to promote these aspects towards customers.
These characteristics inherent to slogans raise the questions of distinctiveness and descriptiveness, both of which can become problematic at the time of registration.
Slogans and the issue of distinctiveness
Slogans can be denied registration for being devoid of distinctive character (article 7)1.b EUTMR) if they are perceived by the relevant public only as a mere promotional formula, and not as an indication of origin of the goods and services.
However, a slogan may function both as a promotional formula and an indication of the origin of the goods and services. So the mere fact that the sign to be registered is a slogan does not automatically justify a refusal.
In case C-398/08Vorsprung durch Technik (“advance through technology”, a famous Audi slogan), the Court of Justice indeed stated that “the mere fact that a mark is perceived by the relevant public as a promotional formula, and that, because of its laudatory nature, it could, in principle, be used by other undertakings, is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character”.
The Court of Justice has developed in its case law a series of factors to take into account when assessing the distinctiveness of a slogan for the purposes of trade mark protection. Accordingly, a slogan may be found distinctive (and hence more than a mere promotional message) if:
It constitutes a play on words
It has a number of meanings
It introduces elements of conceptual intrigue or surprise
It has some particular originality or resonance
It triggers in the minds of the relevant public a cognitive process or requires an interpretative effort
It makes use of unusual syntactic structures or linguistic and stylistic devices.
This list is non-exhaustive but allows to understand that a slogan (even laudatory / promotional in its form) may in principle be registrable if it contains elements that make the mind “click” (play on words, surprise, unusual structure…) or otherwise give it a distinctive nature.
In its Guidelines, the EUIPO provides examples of cases where a trade mark application consisting of a slogan was objected to by the examiner, for lack of distinctiveness:
A customer service statement consisting of a promotional laudatory message highlighting the positive aspects of the service (“We put you first, and keep you ahead”)
A value statement or political motto indicating that the goods represent an eco-friendly alternative to other similar goods (“Save our earth now”)
A value statement whose only objective is to give a positive view of the services involved (“Valores de Futuro”).
Among growing concerns related to climate change and other environmental issues, companies often resort to slogans in order to cast a positive, eco-friendly image. While unfounded or dishonest green claims could result in the refusal of the registration (e.g. the mark being found deceptive), honest green marks can also be refused registration for lack of distinctiveness. Earlier this year for example, in case T-253/22, the General Court confirmed the EUIPO’s decision to refuse registration to the slogan “Sustainability through Quality” for lack of distinctiveness. The Court found that the phrase in question was not formally unusual and did not contain any surprising, fanciful or unexpected element that could trigger a cognitive process or otherwise give it distinctive character.
Conversely, there are times where the EUIPO accepts the registration of slogans as trade marks, deeming them sufficiently distinctive to be registered, for example:
If the juxtaposition of words gives the concept described in the slogan a fanciful and distinctive character (“Wet dust can’t fly”)
If the slogan contains a play on words and shows some degree of originality which makes it easy to remember (“Siteinsights”).
It is not always easy for applicants or even for examiners to assess the distinctive character of a slogan. In the famous case “It’s like milk but made for humans” (T-253/20), the registration of this slogan was refused (partially, in relation to certain goods and services including dairy products) by the EUIPO examiner. This decision was confirmed by the Board of Appeal. However, the General Court ruled to the contrary, finding that the slogan in question was not immediately understandable and triggered an interpretative effort (“this product is similar to milk”; “regular milk is not for human consumption”). Here, the mark applied for actually “[called] into question the commonly accepted idea that milk is a key element of the human diet” and thus set up a cognitive process making it distinctive. The mark could in the end be registered.
Famous slogans successfully registered as EU trade marks (and thus, having passed the distinctiveness test) include Nike’s Just do it, Apple’s Think different, Samsung’s Do what you can’t, McDonald’s i’m loving it, or Adidas’ Impossible Is Nothing.
Slogans and the issue of descriptiveness
As mentioned in introduction, another common hurdle faced by applicants trying to register a slogan as a trade mark is the issue of descriptiveness. Since slogans are often used as a way of promoting the nature and quality of the goods and services sold, the risk is that the application be rejected for being descriptive.
Article 7)1.c EUTMR indeed prohibits the registration of trade marks “which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service”. This means that a lot of slogans will therefore be simply unregistrable as trade marks – for instance those promoting low prices, describing a product as vegan or organic, describing its origin, or praising its quality.
The EUIPO has for instance found descriptive:
The slogan “Find your way” for an application in class 9 (including satellite navigation systems) as it would simply inform customers about the purpose of the specified goods (helping to identify geographical locations in order to find one’s way)
The slogan “Built to resist” filed in relation to stationery, leather imitations, travel articles, saddlery, footwear and headgear, as it would only have a single meaning in relation to the goods concerned (namely that the goods would be resistant).
On the other hand, in the aforementioned “Wet dust can’t fly” case, the Court found that the sign was not descriptive of the cleaning preparations, appliances and services it related to (as moistening dust to prevent it from flying around is not how those services operate).
A look through EUIPO’s eSearch Case Law database shows us that many EUTM applications for slogans fail to go through on grounds of descriptiveness (though not nearly as many as those failing for lack of distinctiveness). This year, for example, the EUIPO rejected (partially or fully) the registration of slogans such as “See how you eat” (for devices, platforms, tools and services used to monitor eating habits), “Ocean life matters” (for educational and training services as well as services in research-related fields), “Rapid resin” (for 3D printers and printing and injection plastic molding machines as well as synthetic and artificial resin products), “Solid-state batteries that work” (for… batteries), or “Pastureland from the Golden Valleys of Ireland” (for dairy products).
To conclude, registering slogans as EU trade marks can be tricky, but it is not impossible if the applicant avoids the traps of descriptiveness and non-distinctiveness. In case of doubt, it is always recommended to file for registration with the support of an IP lawyer, to maximise the chances of success.