Practice Amendment Notice

PAN 1/06 - Issued 5 January 2006

This notice affects Examination and Classification practice about slogans.

The heading has been amended and a new practice guide has been added at paragraph 32.1.11. (Please note that other parts of the text have also been amended, but the practice itself, has not changed).

32 Slogans (and other statements)

Slogans are registrable as trade marks provided that they have the capacity to individualise the goods or services of one undertaking because they are not comprised of signs or indications which directly describe the goods or services or their essential characteristics, and are not devoid of distinctive character for any other reason.

By way of example, the following slogans have been accepted:

These were all found to have the capacity to distinguish goods from one undertaking from those of other undertakings, for the goods/services at issue.

In 'Das Prinzip Der Bequemlichkeit' ["The Principle of Comfort"] C-64/02 P, the ECJ stated that slogans serving a promotional function which is not obviously secondary to any trade mark meaning will be objectionable because:

"…average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans" (paragraph 35).

Whilst confirming that there is no justification for applying stricter examination criteria to slogan marks, the ECJ confirmed that slogans may fall alongside other non-conventional trade marks in being a category of mark that the relevant public is slower to recognise as indicating the product of a single undertaking.

However, that is not to say that a slogan has to contain an additional element of imagination or an additional element of originality to be acceptable; in fact, the ECJ expressly said such criteria should not form part of the assessment of a slogan’s capacity to distinguish the goods of one undertaking from those of another.

Slogans are, by their very nature, adapted for use in advertising and examination should take full account of notional and fair use in that context. It should be borne in mind that the absence of use of the slogan (or similar) by unrelated parties (e.g. during a search of the Internet), does not, in itself, mean that the mark is acceptable (that would be the focus of 3(1)(d)) (see the above decision, paragraph 46).

32.1 Practice

32.1.1 Section 3(1)(c)

Slogans will face an objection under Section 3(1)(c) of the Act if they are comprised of a word combination that an average consumer would regard as a normal way of referring to the goods or services or of representing their essential features.

The intended purpose of the goods or services should be regarded as an essential characteristic of the goods or services for the purposes of this assessment.

32.1.2 Plain descriptive language

The Registrar has objected to the registration of:

NEVER CLEAN YOUR SHOWER AGAIN (Class 3)

– because it describes in plain language the intended purpose of the goods. The fact that the statement may not be literally true is not decisive. Consumers are accustomed to a certain amount of overstatement in advertisements. However, the obviousness of the description need not be fatal to the application if the slogan is an unusual way of conveying a descriptive message, eg, THE SHOES YOUR FEET HAVE BEEN ACHING FOR.

Similarly, although the mark HOW TECHNOLOGY SHAPED THE WORLD would not be acceptable for publications, information or exhibition type goods or services, the Registrar has accepted the mark THE BEST WAY TO PREDICT THE FUTURE IS TO CREATE IT (for technology related services in classes 35, 38 & 42) because this was not considered to be a normal way of designating these services, nor to be a commonplace phrase.

32.1.3 Common descriptive phrases

The mark AN EYE FOR DETAIL (for clothing) was refused because it is a common phrase which, considered in relation to clothing, designates not just a characteristic of the consumer, but also the quality of the goods, i.e. clothing of such quality that it will be appreciated by those consumers with an eye for detail.

However, the mere fact that the mark is composed of a well known phrase, will not result in refusal unless the use of that phrase also designates an essential characteristic of the goods or services, e.g., IT’S NOT ROCKET SCIENCE would be acceptable for shoe polish.

32.1.4 Normal use in advertising to be considered

Some allowance must be made for the fact that, in advertising, it is customary to use short hand when promoting the goods or services. The Appointed Person (Mr S Thorley, QC) upheld the Registrar’s refusal to register the trade mark ‘WHERE ALL YOUR FAVOURITES COME TOGETHER’ for chocolate confectionery on the grounds that it was a natural abbreviation for the longer expression ‘This is where all your favourites come together in one box’, (Case 0/573/01). By contrast the mark FROM THOUGHT TO FINISH has been accepted for goods and services in classes 9, 16, 35, 41 & 42 because it is not a normal means of designating goods and services in the development field, the mark being a play on the well known phrase "From start to finish".

32.1.5 Ambiguity

Ambiguity may enhance the prospects of registrability. For example, the Registrar has accepted the mark NATURE’s REAL THING for foodstuffs in classes 29 and 30 because the reference to natural products is sufficiently allusive, but the mark BEST BUY (on a coloured background resembling a price tag) was refused registration by the Court of First Instance despite the applicant’s argument that it had no precise descriptive meaning to consumers. A slogan which has two meanings will not be registrable if one of them is a description of the goods or services. The mark WE SET THE HIRE STANDARD was refused (for car hire services) despite the possible phonetic alternative meaning, and this would have been the case even if the other meaning had not also been a description of the services.

32.1.6 Section 3(1)(b)

A mark that is free from objection under section 3(1)(c) may still be devoid of any distinctive character because it sends a message that could apply to any undertaking and is not therefore capable of individualising the goods or services of one undertaking. Any objection will identify the alternative message (to a trade mark message) conveyed by the mark.

The following list is not meant as an exhaustive list of the areas where an objection might be relevant, but more as a suggestion of the types of areas covered.

32.1.7 Value statements

Straightforward value statements that could apply to any undertaking are devoid of any distinctive character, e.g., CARING FOR THE PLANET.

32.1.8 Inspirational or motivational statements

These types of slogans are considered to be non-distinctive particularly for services, e.g., YOU CAN DO IT WITH US for driving schools, or GO FOR IT for training courses. Where it is an opaque reference and is in respect of goods then it may be acceptable, e.g., JUST DO IT for sports shoes.

32.1.9 Customer service statements

Similarly, straightforward statements about customer service that could apply to any undertaking are also devoid of any distinctive character, e.g., PUTTING CUSTOMERS FIRST; as are natural abbreviations for such statements, e.g., PUTTING YOU FIRST.

32.1.10 Purely promotional statements

The mark SAY IT WITH CHAMPAGNE is composed of a well known advertising strap line "Say it with..." followed by the name of the goods (Champagne). This mark therefore fulfils a purely marketing function, i.e., an invitation to the public to send a message through the gift of champagne. Similarly, the CFI said that "REAL PEOPLE, REAL SOLUTIONS", whilst not having a directly descriptive connotation, nevertheless has nothing about it to displace its purely promotional message. These examples are to be contrasted with marks such as THE PRINCIPLE OF COMFORT which (at least in English) is an uncommon term with no clear meaning.

32.1.11 Statements by/about the user of goods/wearer of clothing

Slogans such as "I My Boy Friend" or "Here comes Trouble" are often used to decorate goods, particularly clothing – T-shirts, sweatshirts or baseball caps. In this context, consumers are unlikely to perceive this type of slogan as a sign of trade origin. When seen on the front of a T-shirt, a mug, a necklace or a keyring, for example, they are likely to be seen as a personal statement by/about the wearer/user rather than indicating the trade origin of the product. Slogans which are likely to be seen as such will therefore be open to objection under Section 3(1)(b) of the Act.

Where it is equally or more plausible that such a slogan is capable of being seen as a fancy trade mark, such as "Lanky Bird", no objection should be raised on this ground. If the mark is not subsequently used as a trade mark it will become liable to revocation for non-use.