A Patent Office “Practice Circular” sheds lights on what sort of slogan can be registered as a trade mark.
Newsfeed
Topic: Brands
Who: The UK Patent Office
When: Late 2000
Where: London
What happened:
The UK Patent Office published a useful practice circular dealing with the registrability of slogans and strap lines as trade marks. The circular underlines the fact that if a slogan is descriptive of the intended purpose of the product, it is unlikely that it will be registrable. An example the circular gives of a slogan which was refused registration on this ground is "Never clean your shower again". A related ground on which slogans are refused registration is if they can convey a message concerning the quality of the product. Three examples of trade marks refused registration on this ground which the circular gives are "An eye for detail", "The world's best way to pay" and "What you never thought possible".
It is worth bearing in mind here that these phrases may not necessarily be refused registration in all circumstances. The position will be dictated by the type of goods or services for which the advertiser is trying to register the slogan. The "Eye for detail" phrase, for example, was refused registration because the application was in the "clothing" class 25. In relation to other products or services, however, this phrase could be quite meaningless and therefore more "distinctive" and registrable. One example might be an attempt to register "An eye for detail" in respect of coffee. "The world's best way to pay" was refused registration in the financial services class, whilst "What you never thought possible" related to IT products. Clearly in both cases the combination of the phrase and the product type was fatal.
Another rock on which a slogan application may founder is if it describes a way of doing the business which is being advertised. An example of a refused application on this ground is "You buy, we guarantee".
A rule of thumb here is to ask whether the average consumer would regard the slogan in question as a trade mark or simply a description of the product/business. If it's the latter, the slogan will be regarded as lacking in distinctive character and incapable of being registered by one advertiser alone.
One way of getting round this "descriptive" problem is to combine descriptive wording with an existing, distinctive brand. One example given is "Volvo for life". On the face of it this is distinctive enough to be registered. The downside of this of course is that if another advertiser uses the elements of the slogan which are not distinctive, (for example "Ford for life") then it is going to be difficult for Volvo to successfully sue them for trade mark infringement, (although Volvo may be on stronger grounds in the UK if they based their claim on passing off).
Another route out of difficulties here is to devise a slogan that the Patent Office will regard as "fanciful" or "imaginative" or just plain impenetrable when used in connection with the products being advertised. A given example is "From fault to finish" registered for printed goods.
Why this matters:
The Patent Office circular is helpful in that it underlines the danger of going ahead with use of a strapline/slogan without checking with the UK Patent Office as to whether somebody else has already registered it. It is worth remembering here that ignorance of the fact that somebody already owns a conflicting registration is no defence to a trade mark infringement claim.
