Corporations invest vast amounts of money in developing and advertising their brands. Slogans are often used to increase brand awareness. A catchy slogan can have a hugely positive effect on sales of a product, and has the potential to last for decades. For example, thanks to De Beers’ “A Diamond is Forever” campaign, there was an exponential increase in sales of diamond engagement rings in the late 1940s. The “A Diamond is Forever” slogan has been used in every De Beers engagement advertisement ever since. Likewise, sportswear manufacturer Nike has had huge success since launching its “Just Do It” campaign at the end of the 1980s. That slogan is still in use today.
Devising a catchy slogan is important, but being able to protect the slogan against imitation is just as important. Therefore it is imperative that when creating a slogan, corporations should ensure the slogan is capable of being registered as a trade mark. For a slogan to be capable of registration in Europe, it must be ‘catchy’, non-descriptive and distinctive. There is little point in spending time, resources and money on a slogan that can’t be protected in law, by way of trade mark registration.
It is for this reason that we are reporting some relatively recent “slogan” decisions of the Office for Harmonization in the Internal Market (OHIM). Our aim is to give you some guidance on what types of slogans will be accepted and refused protection under European Community trade mark law.
In Case R 74/2015-4, Black Card LLC v OHIM, the Fourth Board of Appeal agreed with OHIM in holding that the slogan “IT’S NOT JUST A CARD, IT’S A LIFESTYLE” was not capable of functioning as a trade mark for financial services including credit card and debit card services. The Board did not agree with the applicant’s argument that the slogan was catchy to the extent that the public would perceive it as having a distinctive character.
In Case R 374/2014-2, Infosys Limited v OHIM, the slogan “BUILDING TOMORROW’S ENTERPRISE” was not protectable for services relating to financial analysis and computer software/hardware design. The second Board of Appeal held “that the trade mark applied for lacks distinctive character within the meaning of Article 7(1)(b) CTMR for all the services applied for”. The Board stated that the fact that the slogan had been accepted for registration in the United States of America was irrelevant, as the registrability of a sign as a CTM must only be assessed by reference to the relevant EU rules. Again the Board held that the sign did not contain any element that would enable the relevant public to perceive it as an indication of the commercial origin of the services at issue.
In Case R 2276/2011-2, A2 Corporation Limited v OHIM, the applicant had applied to register the slogan “FEEL THE DIFFERENCE” in respect of baby food and milk products. The second Board of Appeal refused to accept the Trade Mark as “the mark was devoid of distinctive character, not on the ground that it was a promotional formula, but on the ground that it was not perceived by the relevant public as an indication of the commercial origin of the goods concerned.” The Board of Appeal stated that the mark was not rejected merely because it was a promotional slogan, but rather because it was banal and had a clear and unambiguous laudatory meaning. The Board believed that the expression did not constitute a play on words, nor was it imaginative, surprising or unexpected. As such it could not be accepted for registration.
In Case R 1572/2013-2, Novartis AG v OHIM, the second Board of Appeal refused to accept the slogan “WITH YOU AT EVERY STEP” for registration in relation to educational and medical services. The Board stated that educational and medical services are typically the kind of services where the client “needs support at every step.” Therefore, the Board believed the sign “will be perceived as merely laudatory and non-distinctive, since it constitutes a banal informative message which is not able to function as an indication of business origin.”
In Case R 1073/2015-2, Tyrian Systems, Inc v OHIM, the second Board of Appeal overturned OHIM’s decision and held that the slogan “SEE THE UNSEEN” should be registered. The goods and services applied for registration were highly specialised electronic goods such as infrared cameras and electronic sensors as well as business consultancy services. The Board held that the Examiner had erred in finding the mark ‘laudatory’ and ‘promotional’. The Board also held that the Examiner’s conclusion that the slogan was descriptive of the goods and services could “not seriously be maintained”. The slogan was “undoubtedly distinctive due to its alliterative and paradoxical nature” and so was capable of acting as a badge of origin.
In Case R 2810/2014-2, Micronic AB (publ) v OHIM, the second Board of Appeal held that the slogan “WHEN PASSION MEETS INNOVATION” was capable of functioning as a Trade Mark and should therefore be accepted for registration in respect of machines and repair services. The applicant had argued that the slogan was not a common promotional message used for goods in general, but was a play on words. The Board of Appeal made reference to the fact that according to case law, slogans must be assessed more strictly than other types of Trade Mark. The Board also stated that it “attaches importance to the fact that the relevant public is professional and highly specialised and must be regarded as being highly attentive in relation to purchases.”
Other examples of slogans accepted for registration in the past by OHIM include:
• “HOW BIG CAN YOU DREAM” in respect of computer hardware products.
• “PURSUE THE SKIN YOU DREAM OF” in respect of skincare products.
Considering the case law, the conclusion is obvious: when a business is devising a new European slogan, it must ensure that it is catchy, distinctive and non-descriptive, in order to be confident of obtaining a CTM registration. Furthermore, the distinction between slogans that have been accepted by OHIM, and those that have been rejected, is fine and far from clear cut, as is illustrated in the following summary table:
It makes sense therefore to obtain the opinion of an experienced CTM attorney before filing any European Trade Mark applications for slogans. Even then, the advice may not be conclusive!