Slogans as Trademarks: A Brief Review of the Issue

Slogans as Trademarks: A Brief Review of the Issue

It has been scientifically proven that synthetic, incisive, catchy phrases or sentences availing themselves of rhythms, rhymes, assonances, alliterations, word plays and other language gimmicks, can capture consumers’ attention and are easily remembered.

Therefore, slogans or pay-offs are an excellent help for companies in making them recognizable to the public and they are certainly worth considering for registration as trademarks.

However, careful evaluation of the criteria for a slogan to be validly registered is required both at European and Italian level.

The European Position

In line with the provisions of Art. 7 of the EU Trademark Regulation (EUTMR), a trademark in order to be registered as such must not be merely descriptive of the goods and/or services distinguished by them nor be without distinctive character.

On one hand, slogans were initially considered to be laudatory and/or descriptive and therefore void of any distinctive character, but EU case-law subsequently stated that slogans should not be subjected to more rigid, restrictive evaluation criteria than other forms of trademarks when assessing their distinctive character.

On the other hand, the EU Court of Justice has acknowledged that slogans when compared with other types of trademarks are perceived by the reference public in a different manner and this may make it more difficult to assess or prove their distinctive character.

Consumers’ level of attention to promotional indications is indeed usually quite low, i.e., slogans are primarily perceived as laudatory advertising messages rather than as trademarks and this would therefore exclude slogans from being allowed registration.

If, however, the reference public when reading or hearing a slogan, comes to perceive it as an indication of the commercial origin of a good or service, then the slogan can be regarded as being distinctive even if it has also a clearly promotional nature.

As summarized by the European Union Intellectual Property Office (EUIPO) “What has to be established for a refusal is that it will be perceived merely as a promotional slogan and, therefore, incapable of performing the function of distinguishing goods and services, because this ‘second’ trade mark meaning will not be perceived by the public at all.”.[1]

In particular, a slogan has distinctive character when it meets the following non-exhaustive criteria laid down by the EUIPO:

1. it has a number of meanings;
2. it constitutes a play on words;
3. it introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected;
4. it has some particular originality or resonance, and/or triggers in the minds of the relevant public a cognitive process or requires an interpretative effort;
5. it has unusual syntactic structures and/or linguistic and stylistic devices such as alliterations, metaphors, rhymes.

In this respect, it should be noted that the criteria listed above are not applicable in an absolute manner, i.e., independently of one another. In other words, it is not enough that a slogan has one of the above features for it to be distinctive.

To mention only one example of unsuccessful registration of a slogan as a trademark, the EU General Court considered the slogan “Create delightful human environments” (13/05/2020, T-49/19, EU:T:2020:197) for distinguishing goods in Classes 9, 19 and services in Class 37 in relation to glass window units as non-distinctive, because it has a clear meaning and respects the rules of English syntax and grammar, and also because its semantic content, indicating the intended purpose of the designated goods and services, aimed to promote them and not to indicate their origin.

On the other side, the EU General Court considered the slogan “LOVE TO LOUNGE” (15/07/2017, T-305/16, EU:T:2017:607) for distinguishing goods in Class 25, as sufficiently distinctive, because, although it is a syntactically correct combination of English words, the relevant public will have to put some intellectual effort in relating it to the context of clothing, footwear and headgear, and also because the clever use of alliteration and euphony in the phrase.

The Italian Position

The approach of Italy to the issue of the registration of slogans is essentially the same as the one of the EUIPO.

Particularly important in this connection is Decision No. 37697/2022 of the Italian Court of Cassation, which denied any distinctive character of the slogan specifically concerned “La tua pelle merita di essere trattata bene” (“Your skin deserves to be treated well”) for goods in Classes 03 and 05 and services in Class 35 pertaining to the cosmetic and pharmaceutical field, because of lack of any linguistic arbitrariness, allusive translation or metaphorical transposition that could differentiate this slogan from a merely promotional formula.

In the very same decision, however, the Italian Court of Cassation, referring also to the case law of the EU Court of Justice, stated that slogans can be registered as trademarks, provided that in addition to their advertising nature, they also have a distinctive character indicating the origin of the goods or services protected by them.

In other words, slogans urging consumers to buy goods and services cannot be excluded from registration as trademarks just because of how the applicant uses or intends to use them.

In the above scenario, it is clear how important it is for companies to carefully choose their slogans not only from a commercial standpoint but also − if they are going to register said slogans as trademarks – from the intellectual property viewpoint.

Seeking expert guidance from a trademark attorney is therefore crucial in order to minimize risks of rejection of a slogan as a trademark.

[1] EUIPO 'Case-law Research Report – The distinctive character of slogans effectively' – October 2021