Very often we are asked to register as a trademark a certain slogan (pay-off) and the answer is often not so obvious.
When we talk about pay-off in this field, we immediately think of the well-known “JUST DO IT” by Nike - which has over one hundred registrations worldwide - or the equally well-known "I'm lovin it" by McDonald's - which has also been registered by the American multinational worldwide.
However, the pay-off is not always registrable as a trademark, even though other forms of protection, alternative and different from the registration, are possible.
Recently, for example, the Court of the EU with the sentence of 30 June 2021 has rejected on appeal the application for registration of the figurative trademark
by an Italian company manufacturing bathroom products, specifically for "flushing cisterns for WCs; toilet [WC] cups; water distribution systems."
Prior to this, other decisions at the European level, and not only, had also denied the registrability of certain slogans, noting their lack of distinctiveness: among them, the judgment of the EU General Court 30/04/2015 (joined cases T-707/13 and T-709/13) on the word mark "BE HAPPY" for stationery, giftware (cups and kitchenware) and toys.
Despite the fanciful and original character of the sign, the Community judges denied that the latter could perform the typical and main function of the mark, namely that of indicating the entrepreneurial source of the product or service to which it refers.
Similarly, in its judgment of March 9, 2017, in Puma/EUIPO, T 104/16, the General Court had denied the registrability of the Forever Faster sign for footwear and sporting goods, holding that the trademark would be perceived by the relevant public "as a mere laudatory formula or information about the desired qualities and purpose of the goods in question."
Otherwise, however, there are other precedents that have instead approved the registration of pay-off apparently not very dissimilar to the others just seen. Thus, the Sentence of the EU Court of Justice of 21.1.2010 handed down in judgment C-398/08 P (Audi AG) considered Audi's pay-off "vorsprung durch technik" ["Forward thanks to technology"] as registrable as a figurative trademark.
In this case, according to the General Court, "even assuming that the slogan 'Vorsprung durch Technik' conveys an objective message, according to which technological superiority enables the manufacture and supply of better goods and services, this circumstance does not allow the conclusion that the mark applied for is entirely devoid of inherent distinctiveness". The same judgment states: "All marks consisting of signs or indications which are also used as advertising slogans, indications of quality or expressions inciting the purchase of the goods or services designated by such marks convey by definition, to a greater or lesser extent, an objective message. Such a situation may in particular arise when these marks are not reduced to an ordinary advertising message, but possess a certain originality or richness of meaning, require a minimum of interpretative effort or trigger a cognitive process in the relevant public.
So how can we distinguish between registrable and non-registrable slogans?
The EUIPO, on the basis of the case law produced in recent years, has made available a series of guidelines (available on the site https://guidelines.euipo.europa.eu/1922901/1802830/direttive-di-marchi/4-slogan--valutazione-del-carattere-distintivo) useful for identifying when the slogan has not only an advertising value but also a distinctive character:
"It is possible for an advertising slogan to be distinctive whenever it is considered more than a simple advertising message extolling the qualities of the goods or services in question, in that:
- constitutes a play on words and/or
- introduces elements of conceptual intrigue or surprise, so that it can be perceived as an imaginative, surprising or unexpected sign, and/or
- has some particular originality or resonance, and/or
- triggers in the mind of the target audience a cognitive process or requires an interpretive effort. In addition to the above, the following characteristics of a slogan can contribute so that its distinctiveness can be recognized:
- unusual syntactic structures
- the use of linguistic and stylistic devices, such as alliteration, metaphors, rhyme, paradox, etc.
In the light of these guidelines and the recent judgment of the European Court of Justice on the “GO CLEAN” trademark, the picture seems to be clearer: without prejudice to the function of origin indicator that the trademark must have, this can also be fulfilled through an advertising slogan if the same is not reduced to a "simple laudatory formula". The trademark must therefore, first of all, indicate to the public the provenance of a product or service from a certain entrepreneurial source. Secondly, the trademark undoubtedly also has an advertising function. But when does the distinctive function of the trademark persist despite its distinctly advertising character? Clearer than the precedents cited above, appears the latest decision of the Tribunal according to which:
"41 - It is in fact sufficient, in order to establish the absence of distinctive character, to note that the contested mark indicates to the consumer a characteristic of the product relating to its commercial value which, without being precise, derives from information of a promotional or advertising nature which the relevant public will primarily perceive as such, rather than as an indication of the commercial origin of the goods. 42 - Well, in the present case, the relevant public will not need to make any interpretative effort to understand the phrase "go clean" as an expression that incites to purchase and that emphasizes the attractiveness of the products in question, addressing directly to consumers and inviting them to buy products that offer them greater cleanliness and better hygiene".
It could be said, therefore, that when the slogan is not trivial and obvious but imposes on the consumer a certain interpretative effort in order to grasp its meaning, it is a candidate to be accepted as a trademark.
It is good to remember that a fundamental parameter to evaluate the distinctive character of a sign is the "relevant public".
Therefore, a slogan can be registered as a trademark if it has sufficient distinctive character and is perceived by the relevant public as a sign indicating the entrepreneurial origin of a product or service and not just a laudatory expression or a simple promotional message: "31 Such a trademark must be considered devoid of distinctive character if it is capable of being perceived by the reference public only as a simple promotional formula".
A suggestion could be that of not immediately filing a slogan, but to wait until it has acquired a certain diffusion and fame among the public, a so-called secondary meaning, which makes it immediately reconnectable to a certain product (rectius: to a certain entrepreneurial source).
In this case, in fact, the distinctive function of the trademark is "saved" because it is guaranteed by the so-called secondary meaning.