Slogan registration: a guide to registering a slogan as a trademark

The growing demand for slogans in marketing reflects the saturation of the advertising market and the new search for figures that stimulate demand. Hence the number of applications for slogans that arrive at the registries of the offices seeking protection; however, not all slogans are registrable as trademarks. It is important to assess the distinctiveness of slogans and, therefore, the complexity of their legal evaluation.

Requirements for a slogan to be registrable as a trademark.

First, let us remember that the essential function of any brand is to be distinctive or differentiating; that is, to indicate to the consumer the origin of the business. We explain this in our Frequently Asked Questions.

Slogans only convey abstract information about products or services, so consumers are less likely to invest time in researching the possible functions of such expressions; that is, to go beyond the promotional function and glimpse the business origin.

Therefore, in order to be registrable as a trademark, a slogan must clearly indicate the origin of the goods or services it designates and not be perceived by the consumer solely and simply as an advertising message. The average consumer is not accustomed to making assumptions about the commercial origin of goods through commercial slogans, and the consumer's level of attention is generally low when observing them, regardless of the goods or services and the specialization of the public.

Key factors for evaluating the distinctiveness of a slogan.

Case law has established a series of factors, which are not absolute, that help to establish the criteria for distinctiveness of slogans that seek to qualify as registered trademarks:

• Number of meanings.
• Word games.
• Elements of surprise or intrigue, which may be perceived as imaginative, surprising, or unexpected.
• Originality and resonance, which provokes a cognitive process in the mind of the audience or requires interpretative effort.
• Syntactic and/or linguistic structure, and use of literary devices.

Examples of registered and rejected slogans: case studies.

Below are some cases in which these factors have been taken into account favorably:

• “Advancement through technology” (“Advancing through technology”) was registered on the basis of its distinctiveness, on the understanding that it was perceived as an indicator of commercial origin (January 21, 2010, C-398/08P EU:C:2010:29). The CJEU considered that the presence of several of the above factors gave the sign sufficient inherent distinctiveness to be registered as a trademark. Furthermore, the court clarified that a trademark can be perceived by the relevant public in two ways, one promotional and the other as an indication of the commercial origin of goods and services, and that this would not affect its distinctive character.
• "We make the special simple” (“We make the difficult simple”) was considered distinctive, based on the findings in the case “Vorsprung durch Technick”: observation of that slogan required intellectual effort on the part of the consumer, who had to connect the goods and services with their commercial origin (July 12, 2012, C-311/11 P, EU:C:2012:460).
• "Wet dust cannot fly” (“Wet dust cannot fly”): the syntax of the phrase makes it distinctive and requires a creative process on the part of consumers, who are unable to immediately associate it with the services and products indicated. The slogan implies a degree of originality and resonance that will lead the public to remember it (January 22, 2015, T-133/13, EU: T:2015:46).
• “Love to Lounge” (“I love to relax”): the phrase requires cognitive effort on the part of the consumer public when applied to the products in question. Although the slogan may be perceived as an incitement to purchase those products, it does not constitute mere information (15/09/2017, T-305/16, EU: T:2017:607).

And other cases in which these factors have been taken into account in an unfavorable sense:

• “Best Buy” (“The best purchase”): the CJEU clarified that consumers will perceive the sign in question exclusively as an indication of the advantageous relationship between quality and price and not as a commercial origin, and therefore it would not be eligible for registration as a trademark (January 13, 2011, C-92/10 P, EU:C:2011:15).
• “Quality is the best recipe” (“Quality is the best recipe.”) was rejected on the grounds that it lacked distinctiveness, as it was considered to be merely an advertising slogan for the designated products (12/02/2014, T-570/11). There is no complexity in its syntax, it has no meaning beyond that which is apparent at first glance, and therefore does not require any intellectual effort on the part of the public.
• "Less migraine for a better life” (“Fewer migraines for a better life”) is not unusual in terms of French syntactic rules. The expression conveys a simple, clear, and unambiguous message to the relevant public; it does not confer any particular originality or resonance and does not require any effort of interpretation or cognitive processing (08/07/2020 T-696/19 EU: T: 2020:329).
• "Create delightful human environments” (“Create charming human environments”) does not require any cognitive effort on the part of the public, but simply conveys a promotional message (May 13, 2020, T-49/19, EU: T:2020:197).
• "We're on it” (“We're on it.”): the sign is considered to convey a simple and clear message to the public and is an unambiguous idiomatic expression. It does not require any interpretation or give rise to any cognitive process in the mind of the public (May 13, 2020, T-156/19, EU: T:2020:200).
• "GoClean” (“Go clean”): indicates to the consumer a characteristic of the product relating to its commercial value, which, without being precise, derives from promotional information or its advertising nature, and which will be perceived by the public predominantly as the commercial origin of the products (June 30, 2021, T-290/20, EU: T:2021:405).

Although European case law is consistent, a few years ago there was a discrepancy in criteria between the Court of Justice and the EUIPO Chambers regarding the lack of distinctiveness of the slogan “It's like milk, but made for humans.” (“It's like milk, but made for humans.”The Court of Justice understood that the mark as a whole was not immediately understandable, but that it did require some interpretation. It emphasized the importance of carefully considering whether a slogan in question involves a conceptual tension that triggers a cognitive process (January 20, 2021, T-253/20, EU: T:2021:21).

Conclusions: how to ensure your slogan is registrable.

1. A slogan is considered to lack distinctiveness if it is perceived solely as a promotional message. On the other hand, a slogan is distinctive when, despite its promotional nature, the consuming public simultaneously perceives it as an indication of the commercial origin of the specific goods or services.
2. To be registrable, a slogan must trigger a cognitive process in the consumer.
3. Originality is not assessed under copyright criteria. It must influence the distinctive perception of the public (case “Create delightful human environments” (“Creating enchanting human environments”), May 13, 2020, T-49/19 EU: T:2020:197). In this way, consumers will remember and distinguish the goods and services from those of competitors.

Therefore, if you believe that your slogan meets these requirements, it may be eligible for trademark registration. As lawyers specializing in trademarks and as Official Industrial Property Agents, we can advise you on registering your slogan as a trademark. Likewise, here We explain how to register a trademark in Spain step by step.

[Article written by Eliana Pérez]

Source: (EUIPO case law research report—October 2021).