Can Slogans be Trademarks?

Properly marketed slogans, product phrases and other types of taglines serve to build a brand identity in the minds of consumers. Such slogans become instantly synonymous with the brand, reflecting the company’s products and values in one short statement, and thus worthy of trademark registration.

Brand owners should seek to protect and enforce their rights using trademark law.

 

The question is can slogans be registered as a trademark?

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

  • Be ‘distinctive’: if the trademark is too descriptive of the goods or services or any characteristics of them, the JPO will likely object to your trademark.

  • Be available for registration in your chosen class, i.e. the same or a similar slogan must not have been already registered in the same or similar group of your chosen goods/services;

 

Distinctiveness of Slogans

Trademark Guideline pertinent to Article 3(1)(vi) of the Trademark Law stipulates a standard for slogans.

For a trademark composed of merely terms indicating advertisement of chosen goods/services or corporate philosophy or management policy;

(1)   Where an applied trademark is recognized to indicate advertisement of chosen goods/services or corporate philosophy or management policy in a commonly-used method, such mark is not registrable based on Article 3(1)(vi). In the meantime, where an applied trademark can be recognized not only as advertisement of chosen goods/services or corporate philosophy or management policy but also as a coined word, such mark is deemed distinctive.

(2)   In determining whether the applied trademark is recognized just as advertisement of chosen goods/services, it is judged by taking a concept generated from the entire mark, connection with the chosen goods/services, actual commercial transaction, configuration of the mark, etc. into consideration comprehensively.

(a)     Circumstances in which a trademark is recognized to indicate just advertisement of chosen goods/services

(Factors)

  • The mark indicates explanations of the goods/services;
  • The mark indicates characteristics and superiority of the goods/services;
  • The mark briefly indicates quality and characteristics of the goods/services;
  • The mark consists of words commonly used for advertisement of goods/services (However, it is not required that example suggests actual use of the chosen goods/services for advertisement).

(b)     Circumstances in which a trademark recognizes something other than advertisement of goods/services

 (Factors)

  • The mark is not recognized to have a direct or specific meaning in relation to the chosen goods/services.
  • Whereas an applicant uses the applied trademark for a certain period of time as a mark which distinguishes its goods/services from those of others, a third party does not use the words identical with or similar to the applied trademark as advertisement.

(3)   In determining whether the applied trademark is recognized just as corporate philosophy or management policy, it is judged by comprehensively taking a concept generated from the entire goods/services, connection with the chosen goods/services, actual commercial transaction, configuration of the mark, etc. into consideration

(a)     Circumstances in which the trademark is recognized just as corporate philosophy or management policy

(Factors)

  • The mark describes characteristics and superiority of a company;
  • The mark is described with words commonly used to indicate corporate philosophy or management policy.

(b)     Circumstances in which the trademark is recognized something other than corporate philosophy or management policy

(Factors)

  • Whereas an applicant uses the applied mark for a certain period of  time as a mark which distinguishes its goods/services from those of others, a third party does not use the words identical with or similar to the applied mark as corporate philosophy or management policy.

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

 

Precedent cases

JPO has rejected following slogans due to lack of distinctiveness based on above criteria.

“KEEP THE LIFE LINE”
“ECO-STYLE”
“TOTAL CAR LIFE”
“TECHNOLOGY FOR A HEALTHY WORLD”

 

1187hirai%e4%bf%ae%e6%ad%a3003_2  MASAKI MIKAMI – Attorney at IP Law

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