Por: Franck Soutoul y Jean-Philippe Bresson /OMPI
“Parce que vous le valez bien”™ (Because you’re worth it), “Just do it”™, “Le contrat de confiance”™ (the contract of trust)… These slogans grab attention and are sometimes better known than the branded products themselves. Slogans are a marketing and communication tool par excellence and directly impact consumers by encouraging them to choose certain goods or services over others.
But legally speaking, slogans are at the intersection of several converging intellectual property (IP) rights and the source of many headaches. What is the best way to protect a slogan? How can a slogan be registered as a trademark? If registered as a trademark, how is similarity with another slogan determined? How is a slogan combined with a verbal mark perceived in terms of comparing signs? What precautions need to be taken for slogans created by advertising agencies?
As slogans are tools for gaining market share, involving creative, financial and commercial investment, choosing the most appropriate method of protection is key. Trademark and copyright protection can make a slogan an IP asset, and legislation against unfair competition may be used as a defensive approach. However, each of these means of protection involves a certain risk.
Protection as a trademark
A slogan is a separate category of sign, and is different from the standard trademark. Slogans can, in principle, be protected under trademark law, although they are not explicitly listed among the signs likely to constitute a trademark. However, Article L. 711-1 of the French Intellectual Property Code provides for “combinations of words,” and Article 4 of Regulation No. 207/2009 on the Community trademark refers to “words” in a broader sense. Slogans must conform to the same requirements as any other trademark and, in particular, should not be generic in nature or describe the goods or services themselves, and must have their own distinctive character.
The European Union’s Office for Harmonization in the Internal Market (OHIM) has been much stricter in assessing the distinctiveness of slogans than the French trademark office and courts. Community case law indicates that a more stringent procedure is used to determine slogan distinctiveness than that used for conventional verbal marks.
Invariably, OHIM’s reasoning on refusals was that the public would be likely to understand those expressions as advertising messages, underlining the positive aspects of the goods and services, rather than as signs identifying the goods and services themselves (the function of a trademark). One of the few exceptions, the “Play with nature”TM slogan was accepted by OHIM to designate food and clothing supplements.
The European Court of Justice also issued a decision in January that the Audi slogan “Vorsprung durch Technik” (Advancement through technology) could mature into registration as it was not necessary for a trademark slogan to display “imaginativeness” or “conceptual tension creating surprise and thus making a striking impression.”
On the other hand, the French Office is more flexible regarding slogan registration.