Can a slogan be registered as a trade mark?

When it comes to seeking trade mark protection for slogans, case law provides that – much like any other mark – registration is possible if the slogan in question is capable of functioning as a badge of origin for the goods and services in question. However, in order for a slogan to fulfil this foundational requirement of registration, the slogan must require some interpretative effort to be exerted by the relevant public and also exhibit a degree of originality considering the relevant public’s low level of attention in relation to advertising.

These slogan-specific requirements have long represented a substantial hurdle for trade mark applicants throughout the years, both in the UK and the EU. The issue has reared its head again recently in the EU’s General Court in the form of an application filed by Germany company Groschopp AG Divers & More, which sought to register the slogan “Sustainability through Quality”. The application was rejected by the EUIPO back in March 2020 and then again by the EUIPO’s Board of Appeal in March 2022, on the basis that the relevant public would perceive the slogan merely as an “advertising message” rather than as a badge of commercial origin.

The matter then went for consideration by the General Court. It came to the same conclusion, on the basis of the purely promotional nature of the phrase in question and its failure to convey any indication as to the origin of the applicant’s goods and services. Unlike “Vorsprung durch Technik” (progress through technology) – the slogan at issue in the Audi AG v OHIM (C-398/08) case – the applicant’s slogan was not renowned amongst the relevant public, nor could it in any way be considered to have a double meaning or require the exertion of effort by the public to interpret its meaning with regard to the goods and services on offer.

For the registration of slogan marks in the UK, a degree of clarity on this somewhat ill-defined issue is provided by the UK’s Trade Marks Manual. This provides that slogans are indeed registerable provided that, as is the case with any other type of word mark, they are not descriptive and/or non-distinctive and, like all marks, they function as a standalone mark and act as a badge of origin for a single undertaking. To this end, where one is considering use or registration of a slogan one should steer clear of phrases that incorporate messages that could potentially be used by a similar undertaking. The following elements should therefore be avoided as much as possible:

• plain descriptive language and common descriptive phrases;
• terms that could be used by others as descriptions in the trade in question;
• straightforward value statements;
• inspirational or motivational statements; and
• customer service-related statements.

Furthermore, when formulating a potential slogan for which trade mark protection will be sought, it is important to bear in mind the Court’s position in Audi AG v OHIM (C-398/08), reference to which is made in the UK’s Trade Marks Manual:

“although the existence of [imaginativeness and originality] is not a necessary condition for establishing that an advertising slogan has distinctive character… the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character.”

Although applicable standards are the same for slogans as all other types of mark, due to the nature of slogans and the “accompanying” roles they often fulfil in relation to brand names, they are considerably more difficult to register in practice than traditional marks. Therefore, slogans which are unusual, humorous, puns, plays on words, or have a double meaning, and slogans that somehow manage to subvert the relevant public’s expectations will be more likely to succeed in overcoming the slogan-specific obstacles which will emerge in the process of trade mark registration.

As such, when it comes to registering a slogan as a trade mark, a little bit of imagination can go a long way.