Can a Slogan be a Trademark?

Friday, 20 of March of 2020

In the constant search to differentiate their products and services, companies are trying to register more and more creative trademarks. In this line, the slogan constitutes a valuable marketing tool, since it has a direct impact on consumers and allows companies to stimulate the client and to identify their product or service, becoming, in some occasions, more known the slogan than the product or service itself that it announces.

From a legal perspective, a highly controversial issue in relation to slogans is whether they can be registered as a trademark, with the consequent protection that this affords.

It seems that the general criterion for protection as a trademark is that the slogan in question does not consist of a merely laudatory or promotional name for a product or service. In this regard, there are precedents where the courts have supported the criterion that certain slogans can be protected as a trademark, focusing on the durability component of the phrase with respect to a product. In other words, the slogan must have the ability to be retained by the consumer and relate it to a business origin so that, under the current legislative framework, it can be protected as a trademark.

In the recent Judgment of the General Court of the European Union (hereinafter, GCEU) of 13 February, the TGUE dismissed the appeal against the decision of the European Union Intellectual Property Office (hereinafter EUIPO), thus endorsing its decision to refuse the word mark 'Inventemos el futuro' (Let's invent the future), applied for in 2017 by Repsol for a series of services related to the oil refinery and research.

In that decision, EUIPO determined that the mark applied for "was understood as a motivational slogan which involved the consumer in the innovation actions carried out by the owner of the mark" and that, therefore, it lacked the distinctiveness necessary for its protection as a mark under Article 7.1 b of Regulation 2017/1001 on the European Union Trademark, which sets out the absolute grounds for refusal of marks and, in particular, provides for the refusal of registration of applications which are devoid of any distinctive character.

For the purposes of that article, and as the GCEU states in the abovementioned judgment, the distinctive character of a trademark means that it 'enables the goods and services in respect of which registration is applied for to be identified as originating from a particular undertaking, and thus to be distinguished from those of other undertakings'.

In order to establish the presence of distinctive character, in addition to the fact that the semantic content of the mark in question indicates to the consumer a characteristic of the service relating to its commercial value which conveys information of a promotional or advertising nature, it is necessary that the relevant public perceive it as an indication of the commercial origin of the product or service in question.

The Board of Appeal wondered whether that advertising slogan had elements which, beyond its obvious promotional meaning, could enable the relevant public to memorize easily and immediately the expression in question as a distinctive mark for the designated services. It went on to consider that, in view of the services for which protection was sought (services in Classes 40 and 42), 'the relevant public would not regard the sign applied for as a mark, but only as a simple and immediately understandable laudatory expression devoid of any distinctive element in relation to the services in question”.

In short, the EUIPO considered that the users of these services "would perceive this expression only as an advertising slogan, and that, therefore, the promotional message transmitted by the trademark applied for could belong to any company providing the services in question without constituting, for that reason, an indicator of origin for a specific company" and the GCEU, through the aforementioned judgment, has ratified this criterion.

Finally, it should be pointed out that Article 7(3) of Regulation No 2017/1001 provides for the acquisition of the distinctive character of a slogan through use of the mark, a circumstance also relied on in this case by the appellant. However, the EUIPO and the GCEU agree that the appellant was not able to prove the acquisition of that distinctive character through the use of the mark for the services applied for.

In conclusion, it seems that both the EUIPO and the GCEU are in line with admitting the possibility of registering a slogan as a trademark as long as it is not perceived by the relevant public as a laudatory promotional message that serves exclusively to enhance the positive aspects of the goods or services in question, but provides an additional value that allows them to be linked to a particular business origin.