Slogans may be trademarked

| Published on 03 Apr 2013

Chetcuti Cauchi
Slogans may be trademarked Commercial slogans - those short, often memorable phrases used in advertising campaigns - may be registered as trademarks if they are capable to induce consumers to simultaneously perceive a commercial message and an indication of origin. This was the ruling of the Court of Justice of the European Union (CJEU) on the Smart Technologies case. Through this ruling, while the CJEU confirmed the rejection of the trademark application, it has revised its doctrine on the use of commercial slogans as trademarks by confirming that a mark can function both as a promotional formula and as an indication of origin. Smart Technologies filed a Community trademark application for a slogan for various computer-related goods. The slogan consisted of a phrase “WIR MACHEN DAS BESONDERE EINFACH” (we make special –things- simple). The application was rejected by the Trademarks and Designs Registration Office of the European Union (OHIM) on the grounds that it was devoid of distinctive character. The refusal was based on the fact that the slogan was perceived by the public as a mere promotion rather than also an indication of origin. Through its ruling, the CJEU reaffirmed previously established principles on the use of commercial slogans as trademarks concluding that the mere fact that the slogan has a laudatory connotation does not preclude it from being used as an indication of the commercial origin of goods and services. The CJEU further remarked that slogans should be made subject to the same legal test as other types of signs or marks. This includes the requirement that a slogan be identified with the product/service so that the consumers upon hearing the slogan relate it to the particular product/service. Concurrently, the CJEU conceded that it is possible that in certain types of slogans, the element of distinctiveness is more difficult to prove. This is because it often is the case that a slogan is not actually part of the product per se and is only used in advertising the product. Since it is the whole phrase in a slogan that is afforded trademark protection, the words used to produce the slogan are not afforded sole-use.

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