Brands Bulletin - October 2011
Monday 3rd October 2011
Registering Advertising Slogans as trade marks - has the law become as clear as mud?
Regular readers of this e-publication will recall that in September 2010 we highlighted the European Court of Justice's decision in Audi AG v OHIM.
It was thought at the time that this case provided some much needed guidance and clarity as to the law governing whether or not an advertising slogan could be registered as a trade mark.
In summary, the Court held that the mere fact that a phrase is perceived by the relevant public as a promotional statement (and thus it could, in principle, be used by other businesses) is not sufficient, in itself, to reject an application to register it as a trade mark. Such a phrase could be perceived by the relevant public both as a promotional statement and as an indication of the commercial origin of goods or services sold under or in connection with the phrase (i.e. it could be perceived "as a trade mark" indicating trade origin). This is especially true if the phrase possesses a certain "originality" or "resonance" (for example, if it has a number of meanings, or constitutes a play on words, or will be perceived as imaginative, surprising or unexpected) and, in that way, is easily remembered, or it sets off a cognitive process in the minds of the relevant public and requires a measure of interpretation.
However, a recent decision of the General Court of the European Union illustrates the ongoing difficulty of assessing whether or not an advertising slogan can be registered as a trade mark.
In Meredith Corp., v OHIM the Court held that the word mark BETTER HOMES AND GARDENS could not be registered for, inter alia, "insurance services", as it would not be perceived by an average consumer of such services as an indication of the commercial origin of the services sold under or in connection with the phrase (i.e. it would not be perceived "as a trade mark" indicating the trade origin of the services). Instead, the slogan was regarded as "banal", "informative" and as merely alluding to the fact that the services in question would "aid in acquiring better homes and gardens". It simply extolled the merits of the services which it covered. It would not be seen "as a trade mark".
Most of our readers would probably agree that if they saw the slogan BETTER HOMES AND GARDENS when used in connection with a magazine promoting DIY and gardening, or a gardening and DIY store, then they would see it as a slogan promoting the merits of the contents of the magazine or the DIY store (i.e. "this magazine/store will help you achieve a better home and garden"). But if they saw the slogan BETTER HOMES AND GARDENS when used in connection with "insurance services" would they see it as a slogan promoting the merits of that company's insurance services (i.e. that their insurance services would aid their customers in acquiring better homes and gardens)?
We suspect that some of our readers might question why an insurance company would want to use such a slogan in the first place. Would it really want to use the phrase to promote the fact that its insurance services "aid in acquiring better homes and gardens"? Do any insurance services provide such aid? Would you not question what the slogan meant, if anything, in the context of its use? Thus, if so, does that not mean that the slogan has a certain "originality" or "resonance" or will be perceived as "surprising" or "unexpected" and, in that way, "sets off a cognitive process in the minds of the relevant public and requires a measure of interpretation"? If so, then according to the Audi case the slogan should be capable of being registered as a trade mark.
So, in summary, what does this case tell us? Well, that it is still not easy to say for certain whether or not certain types of advertising slogans can be registered as trade marks for certain goods and/or services, especially without any evidence that, through their extensive use in trade, they have become distinctive of a particular business. Apparently, the more "imaginative, surprising and unexpected" the phrase is and the more "originality" the phrase possesses, the greater the chance of succeeding in getting it registered as a trade mark. But, put bluntly, whether a phrase qualifies under these tests is all a bit subjective and open to differences of opinion…
If you wish to discuss this email, or any other brand or trade mark issue, please contact Carl Steele, Head of Trade Marks, or feel free to contact any of Ashfords' IP Partners.
Should you wish to receive future editions of Ashfords' Brands Bulletin, please email g.holmes@ashfords.co.uk
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