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Slogans - The Tension Between Positive Marketing Messages and Trade Mark Law

For obvious reasons, many marketing teams like to use slogans that deliver clear and positive messages to consumers about the purported benefits of their company’s products and services. For example, think of Tesco’s 'Every Little Helps'.

The problem though, is that the more direct the message, the less likely the UK IPO will allow you to register the slogan as a UK registered trade mark. Without such a registration, it is usually much more difficult to prevent a third party from using the same or a similar slogan to promote their goods and services.

Two recent cases highlight this very point.

In the first case, the applicant sought to register the slogan 'Transparent Home Buying' for “real estate brokering service”. The UK IPO rejected the application, stating that average consumers of such services would not see and regard the slogan ‘as a trade mark’, indicating only one trader’s services in contrast to that of others. In other words, the slogan was not capable of functioning as an indicator of the ‘trade origin’ of the services in question. It was held that the slogan was purely and exclusively laudatory and would be seen and regarded as a non-distinctive message, referring to the notion of a home buying process that is transparent. The slogan promoted the services in a positive manner and nothing more. It lacked inherent distinctive character and thus could not be registered as a UK trade mark for the services in question.

In the second case, the applicant looked to register the slogan 'Heighten Your Senses' for ‘controllers for games consoles/computer games’.  Unsurprisingly, the application was rejected and registration refused. The UK IPO held that the slogan was (inherently) incapable of designating trade origin (i.e. when used it would not be seen and regarded as a trade mark, enabling average consumers of the goods to distinguish the applicant’s goods from those of other traders). The slogan simply highlighted a positive and desirable aspect of the goods and did not have any “trade mark significance”. It was a purely promotional statement and lacked distinctive character.

The message is clear – if you want to be able to register your slogan as a trade mark it needs to be more than a mere positive, non-distinctive statement about the goods/services in question. By way of example, the UK IPO has previously allowed the slogan “The Fruit, the Whole Fruit and Nothing but the Fruit” to be registered as a UK trade mark for fruit juice drinks.

For more information about this article, please contact Carl Steele.

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