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Can you protect your slogan legally?

Can you protect your slogan legally?
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Can you protect your slogan legally?
Alex Lee by Alex Lee
Solictor - Buss Murton Law

As a business owner or small business manager, you know the value of your brand.  You invest a lot to establish your place in the market, your brand recognition and the values that you want people to associate with it whenever they see your logo.  That’s why businesses protect their brands through trademarks.  But what about your slogan?  They can be as much a part of the brand identity as the logo, so can you give them trademark protection?  As Alex Lee of Buss Murton Law explains, the answer is yes – sometimes.

If you think of McDonald’s ‘I’m loving it’, Nike’s ‘Just do it’ or Coca Cola’s ‘The real thing’, it’s instantly obvious that the slogans are as much a part of brand identity as the golden arches, the tick or the red-on-white curly writing.  It’s also obvious that the companies have invested considerable resources in establishing their slogans so they are synonymous with their brands.  While your marketing pockets may not be quite as deep as these international giants, you may also have invested considerably in your slogan, so can you protect it the way you can protect a logo? 

The simple answer is yes – but this is the law, so it’s never really than simple! 

Trademark criteria  

It used to be very hard.  Previously all the trademark rules had to apply to a slogan for it to be afforded trademark protection: it had to be distinctive, non-descriptive, denoting origin and it had to be perceived as a trademark.  While ‘Just do it’ is the phrase that catapulted Nike into a must-have brand, it would be hard to argue that this is its trademark, when the whole world knows the company’s trademark is the tick.  So trying to meet all of these criteria proved an obstacle. 

Fortunately, the idea that a slogan has to be a trademark in its own right has been abandoned.  The key criteria that a slogan now has to pass are that it is distinctive and that it denotes origin.  But what does that mean in practise?  ‘Visible White’ was deemed insufficiently distinctive in describing a toothpaste to merit trademark status.  So too was ‘Have a break’ when Nestlé tried to register it in relation to Kit Kat (however they were successful in registering ‘Have a break, have a Kit Kat’).   By contrast, ‘Vorsprung durch Technik’ was accepted as being ‘imaginative, surprising and unexpected’, and so won trademark protection. 

Less distinctive slogans have also been awarded trademark status as they have been deemed to acquire distinctiveness through strong market recognition after years of investment in marketing, a prime example being ‘Does exactly what it says on the tin’. 

Would your slogan pass the test?  

The most obvious way of achieving a distinctive slogan is to create your own word/s, for example Beanz Meanz Heinz, or including a distinctive logo, such as ‘The car in front is a Toyota’.  Changing spellings or grammar may not be sufficient. 

If you don’t have a truly distinctive word or logo, the authorities will look for originality, surprise and inventiveness.  Simply offering a consumer service statement (for example ‘More than a credit card’) or adopting a commonly-used phrase (such as ‘Your one-stop shop’) won’t work, and describing your product (for example ‘Never shampoo your carpet again’) will fail the non-descriptiveness test. 

But if your logo is distinctive – in that it is surprising, original and is not a description of your good or service – it must also indicate the commercial origin.  To which the last word should be given to the FT, after all ‘No FT, no comment’. 

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Alex Lee  is a Company & Commercial and Employment Law Partner at Buss Murton Law , which has been providing expert and trusted legal advice to individuals and businesses for generations.  With offices in Tunbridge Wells, Cranbrook, East Grinstead and Dartford,  Buss Murton provide legal expertise to clients across Kent, Sussex, Surrey and Greater London.