Trade marks as suction points: slogans & straplines

Slogans make good trade marks commercially because they are easily memorised: think HAVE A BREAK for KIT KAT chocolate-covered fingers and BECAUSE WE’RE WORTH IT for L’Oréal cosmetics.

However, slogans have been difficult to protect through registration under UK and EU trade marks laws.  The reason?  Trade marks authorities are cautious (and some would say over-cautious) in allowing traders to monopolise parts of the vernacular.  So, trade marks like DAS PRINZIP DER BEQUEMLICHKEIT (THE PRINCIPLE OF COMFORT) and REAL PEOPLE, REAL SOLUTIONS were refused registration as trade marks right up to the (then) highest court level, the Court of Justice of the EU (“CJEU”).

The tide appeared to be turning when Audi AG applied to register its famous trade mark VORSPRUNG DURCH TECHNIK (ADVANTAGE THROUGH TECHNOLOGY) for a wide variety of goods and services.

The CJEU eventually allowed the registration to go ahead.  The Court made clear that slogans/straplines could not be refused registration as trade marks just because they were also used as advertising slogans, indications of quality, laudatory statements or other incitements to buy.  Further there were no requirements for imaginativeness and, or creativity in order to meet the minimum threshold of distinctiveness for registrability.

That said, this apparent loosening of the reins did not last for long, with the Registries tending to limit the Audi ruling by fastening on to the CJEU’s comment that Audi AG’s VORSPRUNG DURCH TECHNIK slogan was already well-established as a trade mark for cars.

Nevertheless, some slogans did get through the trade marks registration eligibility net, like THERE AINT NO F IN JUSTICE for clothes.

A recent decision of the General Court of the CJEU (Case T-253/20), though, indicates a return to the Audi way of thinking.

Oatly AB’s application to register the trade mark IT’S LIKE MILK BUT MADE FOR HUMANS was refused by the EUIPO in respect of various foodstuffs, drinks and beverages on the ground that it would merely be understood by the public as a promotional slogan (meaning a mere laudatory statement).

But at the next level up the General Court reversed that and allowed the registration to proceed.  Applying Audi, the Court held that the trade mark possessed the minimum level of distinctiveness required for registration because it set off a cognitive process in the minds of the public by conveying two opposing messages – (1) the product was like milk, but (2) made for humans – which were easily memorable.

If you have a slogan/strapline that you think is a real suction point for business incoming to you, or which sets your business apart from competitors, and you think it worthwhile trying to monopolise its use in relation to the types of goods or services which your business supplies, then let us know and we can give you our view on its registrability as a trade mark in the UK, EU and/or elsewhere in the world.

This piece was written by Robert Humphreys.  If you have any questions or queries about any of the issues raised above, then do please let him know.

All the thoughts and commentary that HLaw publishes on this website, including those set out above, are subject to the terms and conditions of use of this website.  None of the above constitutes legal advice.  Much of the above will no doubt fall out of date and conflict with future law and practice one day.  None of the above should be relied upon.  Always seek your own independent professional advice.

Humphreys Law