When slogans become trademarks

Catchphrases, pay-off lines and sassy slogans are the order of the day in advertising campaigns. But do they earn the advertiser the right to hold a trademark? Trademarks are generally associated with brands or logos. Yet, slogans may also perform a trademark function by distinguishing the goods or service of a company from those of another.

Slogans are subject to the same legal test as other types of signs or marks- Josette Grech

The Court of Justice of the European Union recently delivered judgment on the extent to which advertising slogans can be registered as trademarks.

Smart Technologies filed a Community trademark application for a slogan for various computer-related goods. The slogan consisted of five standard German words “Wir machen das besondere einfach” (German for “we make special (things) simple”). The phrase contained a laudatory message without any unusual variations of German syntax or grammar.

The Office for the Harmonisation of the International Market which processes Community trademark applications refused the request for registration on the basis that the slogan was devoid of distinctive character. The refusal was based on the fact that a mark consisting of an advertising slogan is liable to be perceived by the public as a mere “promotional formula” rather than as an indication of origin.

Smart Technologies appealed to the CJEU arguing that the focus should rather be on the distinctive nature of a trademark irrespective of its promotional function. The CJEU dismissed the appeal and upheld the findings of the OHIM.

Setting out the evaluation criteria for distinctiveness required of trademarks, the Court held that the mark must be capable of identifying the product, in relation to which registration is sought, as originating from a particular company. The assessment of distinctiveness must be made by reference to the goods or services for which registration is sought and by the public’s perception of the mark.

In this regard, the Court pointed out that the mere fact that a slogan is used as such does not preclude that slogan from being used at the same time as an indication of the commercial origin of the commodity it seeks to promote. Irrespective of the laudatory connotation of a slogan, a slogan is nonetheless able to have distinctive character, such that consumers may simultaneously perceive the slogan as both a commercial message and an indication of origin.

The CJEU remarked that slogans are subject to the same legal test as other types of signs or marks, and it would have been inappropriate had OHIM applied stricter criteria in its analysis. However, the Court conceded that it is possible that in certain instances it might be more difficult to prove the required distinctiveness in relation to some types of marks, such as advertising slogans or shape marks.

Smart Technologies asserted that a level of distinctiveness lower than is generally required should be sufficient to allow the mark applied for to be registered, as the targeted consumers were specialised and had a higher level of attention and knowledge than the average consumer. The CJEU acknowledged that the relevant public was made up of German speakers specialising in the computer field whose level of knowledge and attention was greater than that of the general public.

The level of specialisation of the targeted public is not in itself sufficient to allow the registration of trademarks that do not reach the minimum level of distinctiveness generally demanded. On the contrary, the attentiveness of the relevant public is only one of the several criteria to be assessed since distinctiveness has to be measured taking into account an overall impression.

Against these observations, the CJEU confirmed OHIM’s rejection of the application. Of significance is the fact that the ruling confirms that a mark can function both as a promotional formula and as an indication of origin.

jgrech@demarcoassociates.com

Dr Grech is an associate with Guido de Marco & Associates and heads its European law division.