The struggle to register a slogan as a trade mark.

First Steps and considerations

The UKIPO will examine the proposed mark to ensure that it will not fail under the absolute grounds for refusal, which previous articles provide further detail on these grounds. However, essentially a mark will be deemed as able to function as a trade mark if it is able to distinguish the goods / services of one undertaking from those of another and that it is not wholly descriptive in nature.

It is important to note that the mark may be refused out right if it lacks distinctive character and / or is purely descriptive of the goods or services of the trade mark. Specifically, the main function of this objection is to exclude trade mark applications that do not fulfil the ‘distinguishing function’ of a trade mark. The primary function of a trade mark is to allow the general public to be able to indicate the ‘commercial origin’ of the mark, namely the brand owner and not potentially be confusing. If this does not exist, the trade mark’s fundamental function is not fulfilled and therefore the trade mark is devoid of distinctive character. It is also an important point that a mark cannot consist of customary language, hence why a slogan can be very difficult to be registrable.

Now the application for a slogan

Although a little more complicated for an examiner to consider, this is the same for a slogan to a degree because a slogan is registrable providing it is of course non-distinctive and/or not descriptive. Although, the UK Intellectual Property Office outlines a number of examples of slogans that have been accepted such as ‘GOING YOUR WAY’ as a taxi service due to it only being a casual link, or ‘NATURAL JUST GOT SEXY’ for clothing which was deemed as imaginative. Further detail on this can be seen at:

https://www.gov.uk/guidance/trade-marks-manual/the-examination-guide

The Law

There is also a number of case law that have explored the registrability of slogan mark which an examiner will be mindful about. In fact, it is argued that it could draw the attention away from the basic legal requirement for the designation as a whole to be capable of functioning effectively as a stand-alone trade mark. Of many cases which deliberate on the registrability of slogans, the Audi AG v OHIM (C-398/08, which is also known as the ‘Vorsprung durch Technik’ case explored the public perception of different categories of marks may not arrive at the same conclusion and could be argued as more difficult to establish distinctiveness and necessary characteristics such as ‘imaginative’ or having ‘originality’. In this case it said that “it should be noted that, although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan has distinctive character, as is apparent from paragraph 39 of the present judgment, the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character.”

These considerations highlight the complexity of the trade mark registration process, but also how interesting it is. A slogan should be given consideration and although this is just touching the surface on what is required, the link above will offer further information to assist you before you decide to proceed with filing a trade mark as a slogan. For further information, do not hesitate to contact us and we will be able to advise you on the likelihood of the examination report before you part with money, but remember that nothing is guaranteed and it will ultimately be down to the examiner on the day. It will then be for you to consider if it is worth fighting the decision depending on the examiner’s reasoning.

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