The most conventional trade marks, and the top priority in terms of taking the first steps to protect the brand, are the brand names and logos.
Once these have been taken care of, the brand owners could look into protecting additional brand identifiers, such as slogans. Many well known brands register their slogan as trade marks, and some of the famous examples include Nike’s “Just Do It”, MacDonalds’ “I’m lovin it”, Chanel’s “It’s All About Seconds”, all of which are protected by trade marks on a worldwide basis.
Obtaining protection for slogans might therefore look relatively straightforward. However, it’s not that simple. A lot of trade mark applications for slogans get refused in both the UK and the EU. For example, an application for “GO CLEAN” in relation to bathroom products, “MORE THAN JUST A CARD” in relation to credit card services were refused by the EUIPO.
So what makes a slogan registrable from a trade mark protection perspective?
Both UK and EU Intellectual Property Offices issued lengthy guidance on registrability of slogans.
For example, according to the EUIPO’s Trade Mark Guidelines, a slogan is likely to be considered distinctive, if it:
· “constitutes a play on words, and/or
· introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or
· has some particular originality or resonance, and/or
· triggers in the minds of the relevant public a cognitive process or requires an interpretative effort.”
Examples of accepted slogans in the EU, in addition to the mentioned above well-known slogans, include:
· LOVE TO LOUNGE in relation to clothing
· WET DUST CAN’T FLY in relation to cleaning preparations
The UKIPO also accepted the following slogans:
· NATURAL JUST GOT SEXY in relation to clothing
· GOING YOUR WAY in relation to taxi services
Apart from criteria mentioned above, there are a lot of additional factors that come into play when the relevant registry considers whether to accept a particular slogan as a trade mark. If you would like to obtain protection for your slogan, or indeed if you wish to discuss trade mark protection for your brand in general, please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our specialist IP lawyers.
Written by Anastasia Troshkova, Associate
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