Can an advertising slogan be a trademark?

Authors: Kristina Vilkiene, Assistant Attorney-at-Law in METIDA, Erikas Saukalas, an Associate Partner, Head of International Relations Division in METIDA

caslonprotellsstoryThe Law on Trade Mark of the Republic of Lithuania considers the trademark as an ability to separate one individual’s goods and services from another individual’s goods and services. There is also a requirement that the trademarks could be represented graphically. This is how a trademark is perceived by the law. The marketing sees a trademark as a tool to attract customers. Therefore, to the marketing a trademark is not merely a “mark which can be displayed graphically”. In other words, from the marketing point of view, a trademark needs to acquire a unique element which would attract the public by its looks, colour or word. And since in today’s marketing there is little time to wait, a slogan is needed which would clearly inform the consumer of what product or service is worth choosing and why. However, when speaking of “why”, an antipode occurs between a legal definition and the marketing. On one hand, it is possible to think that if the mark is different from others in the market it carries out its function i.e. differentiate one individual’s goods and services from another individual’s goods and services. However, regarding this function, certain requirements are posed on the mark registered as a trademark. One of the requirements is for the trademark to have a distinctive feature. If this criterion is not met, the mark cannot be registered as the trademark

Particularly, this kind of ground of refusal is usually indicated when an advertising slogan is refused to be registered as a trademark.

One of the newest judicial cases in which the registrability of an advertising slogan was analysed is Delphi Technologies Inc against the Office for Harmonization in the Internal Market (OHIM). The advertising slogan INNOVATION FOR THE REAL WORLD was examined which the applicant Delphi Technologies Inc strived to register as a Community trademark to mark goods of classes 7, 9, 10 and 12 in accordance to Nice Classification (motor vehicle parts, GPS navigation and sound systems, medical apparatus and instruments).

OHIM refused to register this trademark stating that applied to be registered mark does not have a distinctive feature. According to the evaluation by the OHIM Boards of Appeal, the slogan ‘innovation for the real world’ will be understood by a corresponding part of society without any interpretations as a laudatory slogan that applicant’s provided goods are innovations to the real world. The fact that goods marked with this mark were meant for the market in which the innovation are particularly significant make the meaning of this slogan even clearer. And thus, as far as the Boards of Appeal is concerned the applied to be registered mark cannot be considered as a commercial origin of the goods. Moreover, none of the elements in the ‘innovation for the real world’ slogan without an advertising meaning  will allow for a respective part of consumers to easily and immediately remember the trademark as a distinctive mark. In addition to this conclusion, the Boards of Appeal noted that the applied to be registered mark is not a wordplay, neither it is scenic, surprising or unexpected. Delphi Technologies Inc appealed against this decision by OHIM Boards of Appeal to the General Court, however, the Court upheld OHIM’s decision which was based on the grounds of refusal regarding the Community trademark registration.

The General Court acted in accordance with the practice of the courts, meaning that the evualuation of the distinctinction of the mark which is formed from a combination of words, was examined by considering the combination of elements included in the mark as a whole, but not examining its separate constituting elements. And after evaluating the combination of words ‘innovation for the real world’ as a whole, the General Court stated that the phrase suggests that the goods marked with it are innovations meant for the real world by English speaking consumers. In other words, the consumer will perceive the slogan as a reference to innovative goods, however not as a commercial origin of the goods. Also, according to the court, this combination of words can be perceived as a cue that the goods marked with it are of good quality.

Finally, whilst assessing the opportunities of the advertising slogan to be registered as a trademark, the General Court noted that if the advertising slogan was perceived by the consumers only as an advertising statement, this compound would be considered as devoid of a distinctive feature in terms of trademark law. However, if this compound without its advertising function can be immediately perceived by a respective part of society as a commercial origin of goods or services too, this advertising slogan can be acknowledged as possessing a distinctive feature and registered as a trademark.

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