What a slogan must accomplish in order to be protected as a trade mark

A recent decision by EUIPO illustrates once again how high the barriers are for registering advertising slogans as Union trade marks. The rejection of the phrase Helping you to protect what matters for tomorrow exemplifies what trade mark applicants must take into account; and which arguments are insufficient to overcome lack of distinctive character.

Anyone attempting to register an advertising slogan as a trade mark in the European Union enters legally difficult terrain. While word combinations are in principle capable of being protected as trade marks, the devil is in the detail: the slogan must meet the minimum requirements for trade mark protection. Among the so-called absolute grounds for refusal, one stands out above all: lack of distinctive character.

This quality was however denied to the slogan Helping you to protect what matters for tomorrow by the European Union Intellectual Property Office (EUIPO) in a recent decision. The word sequence was to be protected as a word mark for legal services in class 45, in particular in the field of industrial property rights, – but without success.

What was it about?

The applicant had submitted the English-language slogan Helping you to protect what matters for tomorrow for registration as a Union trade mark. The services included inter alia legal advice and representation, as well as strategic IP advice provided by patent and legal practitioners.

However, the Office saw in the slogan no indication of the commercial origin of the services, but merely a general advertising statement. The decisive reasoning: the sentence would be understood by the relevant circles of the public simply as a laudatory advertising phrase. The slogan merely indicated that the services served to protect important rights for the future. This was insufficient for distinguishing the trade mark.

Why is distinctive character lacking?

According to Article 7(1)(b) of the Union Trade Mark Regulation (UTMR) trade marks are excluded from registration if they lack distinctive character. This applies in particular to statements that are perceived by the relevant circles of the public merely as advertising or quality promises, but not as an indication of a particular undertaking. That was precisely the case here. The EUIPO stated that while the content of the slogan – freely translated: "We help you protect what matters for tomorrow" – was positive, it was too vague and generic to fulfil a trade mark function. The slogan contained merely a "factual statement" about the purpose and objective of the services offered.

Why did the counter-arguments not succeed?

The applicant had relied inter alia on well-known trade mark decisions, such as the Audi slogan "Vorsprung durch Technik" or statements such as "Do what you can't". However, the EUIPO was not persuaded. It pointed out that these decisions concerned different constellations.

A further argument of the applicant was that the slogan was ambiguous and triggered a thought process in the public – a classic criterion for distinctive character. However, the Office disagreed on this point too: the sentence was logical and comprehensible in itself, without it exhibiting interpretative depth. The formulation was neither original nor striking enough to establish itself in the minds of consumers as an indication of origin.

Conclusion

The decision once again makes clear to all those wishing to have an advertising slogan protected as a trade mark that it is not sufficient for a slogan to sound good or to arouse positive emotions. It must also "function" in terms of trade mark law. For this, it should preferably be original, surprising or ambiguous, and formulated in such a way that the public perceives it not merely as advertising but as an indication of origin.

Our practical tips:

1. Creativity with strategic depth: A word combination capable of being protected as a trade mark should be more than just an advertising promise. Ideally, it contains linguistic breaks, contradictions or surprising formulations.

2. Analyse the target audience and language: Check how your target audience understands the slogan; especially with English-language trade mark applications.

3. Study comparable decisions: Older registrations provide guidance. However, they do not guarantee success. Each case is examined individually.

4. Obtain legal advice early: The sooner trade mark law advice is sought, the better time and costs can be optimised.

If you have questions about trade mark registration – in particular advertising slogans – we are at your side as experienced lawyers specialising in trade mark law providing comprehensive advice and representation. We support you through all phases – from the creative idea to registration.