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Forever faster, and the challenge of protecting slogans as trademarks

04-04-2017

Slogans, products phrases and other types of taglines can help companies to build brand identity; however, applications to protect them as trademarks are not always successful, as evidenced by a recent decision by the General Court of the European Union. It found that the slogan FOREVER FASTER is not sufficiently distinctive to serve as a trademark for sportswear and sports equipment. Novagraaf’s Frouke Hekker explains the ruling.

Properly marketed and employed, slogans can help companies to build an instantly recognisable brand identity in the minds of consumers. Nike’s ‘Just Do It’ and McDonalds’ ‘I’m lovin’ it’ are just two examples that spring instantly to mind. However, as important as these types of marketing taglines can be to brand identity and brand success, there is no separate IP system to register ownership of that creativity; instead, brand owners need to seek to protect and enforce their rights using trademark and/or copyright law.

Requirements for trademark registration
In order to be registered as a trademark, a phrase or slogan will have to fulfil the usual criteria for trademark registration, in that it must:

  • Be available for registration in the chosen class, i.e. the same or a similar slogan must not have been already registered in the class or jurisdiction for the same or similar group of services;
  • Not be too ‘descriptive’: if the trademark is too descriptive of the goods or services or any characteristics of them, then the trademark office will likely object to the mark;
  • Be ‘distinctive’: the more distinctive the wording used, the more likely it will be that the trademark will be awarded protection by the relevant register.

It is this final requirement that can often pose the greatest hurdle for brand owners seeking to register their slogans as trademarks.

Because many slogans are considered descriptive indications from the point of view of trademark law, on application they are initially deemed not to be sufficiently distinctive to be registered as trademarks. Registration is only a possibility, therefore, when the slogan ‘acquires distinctiveness’, meaning that the trademark has become distinctive because of the use which has been made of it.  An example of this is ‘Vorsprung durch Technik’ as used by car manufacturer Audi, which Europe's highest court, the European Court of Justice, found to function as a trademark in 2010, ruling that a slogan may serve as a trademark if it “exhibits a certain originality and resonance”.

If a slogan is registered as a trademark its holder can prohibit other businesses to use a similar slogan for similar goods and services.

The case of FOREVER FASTER
In December 2013, the trademark proprietor of well-known sports brand Puma filed an application for a European Trademark (EUTM) to protect the slogan ‘FOREVER FASTER’ for (among other things) footwear and sport articles. The European IP Office (EUIPO) refused the application and, last month, the EU’s General Court confirmed that decision.

Essentially, the General Court found that the relevant public would perceive the slogan FOREVER FASTER as a “simple promotional formula”. This does not meet the requirement of distinctiveness under trademark law. It ruled that this was the case in part because the words ‘forever’ and ‘faster’ are standard English words, while the word ‘faster’ refers directly to the goods for which the slogan was applied to protect. In other words, the relevant consumer buys (sports) shoes or sports equipment to move fast(er) and/or to compete more effectively. The court also found the slogan not to be adequately imaginative or surprising to pass the distinctiveness test.

The copyright option
Certain phrases and taglines will qualify for copyright protection if they are deemed to be ‘sufficiently original’ with their ‘own character’. In practice, however, these criteria are not always easy to prove, and  it will be for the courts to examine in each case whether or not copyright subsists in the slogan.

Where the trademark or copyright system does not apply, certain other non-registrable IP rights can be employed in the UK in case of copying or infringement, such as passing off.

Please don’t hesitate to contact your Novagraaf attorney for specific advice on protecting slogans or other forms of marketing taglines.

Frouke Hekker works in Novagraaf’s Competence Centre. She is based in Amsterdam