The question of whether you can trade mark a slogan is a good one to consider, and it’s particularly pertinent given that the EU Intellectual Property Office (“EUIPO”) has recently published a report on this very issue. The report, entitled ‘The Distinctive Character of Slogans’, seeks to clarify what is and isn’t registrable in the slogan world. But, before I come onto this, let me first explain why this might be a problem.
Essentially when applying for a trade mark registration you don’t just need to come up with something that’s different to pre-existing marks. Instead, you also need to get over a number of initial “examination” hurdles. These are issues which, if not addressed, will result in an early refusal of your application. The two most common are descriptiveness and distinctiveness. You cannot register a trade mark if it simply describes the goods or services that you’re seeking to protect. Equally you cannot register a trade mark if it lacks the requisite level of distinctiveness (broadly speaking, if it’s too generic) for protection.
It’s this second rule that often scuppers applications for slogans because they are often designed to be simple, easy to follow and recognisable, all of which can reduce their level of distinctiveness, ultimately leading to an application refusal.
So, what to do?
Well, the EUIPO has come up with a number of factors to help indicate a distinctive slogan. These are as follows:
The EUIPO says that in applying these factors you will be able to distinguish between an insufficiently distinctive slogan and a distinctive slogan. It even gives some examples; “We’re on it” is a simple, clear and unambiguous expression, it will be immediately perceived by the relevant public as an ordinary advertising message promoting the quality of the goods and services and, as such, isn’t distinctive. Whereas “Wet dust can’t fly” is clearly already a bit odd and calls for an interpretative effort on the part of consumers. Therefore, it’s distinctive.
In short, it is possible to register a slogan as a trade mark, but there can be difficulties based on the distinctiveness of the slogan. Using the EUIPO’s factors, we can better determine which slogans are distinctive and which are not. Slogans that are distinctive by the EUIPO’s standards have a much better chance of being accepted as a trade mark.
So, hopefully, this often murky issue is now a bit clearer and you’re ready to file a trade mark application. If that’s the case, the next step is to contact our team and speak to one of our friendly trade mark lawyers. We’re here to help!
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