Slogans are becoming more and more popular as a way of distinguishing a business from its competitors, especially in the world of multimedia and broadcasting. A clever, unique and catchy phrase can stay in the minds of consumers and also reflect the business’ key values and identity.
In this guide, our trade mark solicitors discuss the benefits of registering a slogan as a trade mark, how to register a slogan as a trade mark and the expected cost of registering a trade mark.
Contents:
- Can you register a trade mark for a slogan in the UK?
- Distinctiveness Acquired Through Use
- What are the benefits of registering a trade mark for a slogan?
- Can I register a trade mark for a slogan that is already in use by another company?
- How to register a trade mark for a slogan
- How much does it cost to trade mark a slogan?
- How long does trade mark protection for a slogan last?
- What happens if my trade mark application is refused?
- Can I rely on other forms of protection for my phrase?
- Summary
Can you register a trade mark for a slogan in the UK?
The answer is yes, subject to certain requirements that may make it somewhat trickier than a simple application for a traditional word mark or logo. Slogan marks are filed and examined at the UK Intellectual Property Office (IPO) in the same way as ordinary word and image marks. They must comply with the legal requirements governing trade marks in general and be capable of functioning effectively as a stand-alone trade mark.
Trade marks must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. This means that they have to be distinctive and must not be purely descriptive of the goods and services covered. Failure to satisfy these two requirements presents the most common reasons for the rejection of slogans by the IPO Examiners.
This is because slogans are often perceived by consumers as simply advertising text and not an indication of the brand itself. So, the slogan must contain additional elements to overcome this initial perception. Added imaginativeness and originality and employing catchy, unusual and ambiguous wording can help as well as avoiding plain descriptive language, commonplace phrases and straightforward statements that could apply to any business.
Particular issues may apply with slogans intended for use on clothing items such as sweatshirts, caps and t-shirts as such items often feature slogans as part of their design. There is an added risk that a slogan mark for these items would be perceived simply as a statement about the wearer or as mere decoration. It may be necessary to submit pictorial examples to the Examiner to show how the mark is intended to be used on tags and labels rather than as ornamentation on the goods themselves.
Distinctiveness Acquired Through Use
If the Examiner objects to your slogan as being too descriptive or lacking in distinctiveness, you will have the opportunity to reply with arguments as to why you think the slogan is acceptable. You may be able to delete certain items of goods and services from your application, that render the slogan descriptive and continue with the remainder.
If this still fails, you may be able to overcome the objection if you have already used the slogan for several years and have built up significant recognition and goodwill in the slogan. You can submit evidence to show how your mark has become distinctive through your extensive use of it. This can include evidence of profits, accounts, invoices, advertising and marketing expenditure, promotional literature and sales receipts. The evidence must be dated before the date of your application and contain reference to the slogan itself.
If you have only used your slogan in combination with another trade mark or brand identifier, it will be more difficult to show that it is the slogan alone that the public recognises as the brand and you are likely to require more extensive evidence of use if this is the case.
What are the benefits of registering a trade mark for a slogan?
Once you have your slogan registered, you will then have a monopoly right to use your slogan throughout the UK for the goods and services covered by your registration. This means that you can take action to prevent competitors and third parties from unauthorised use of your slogan. You can also exploit your slogan as a property right in itself and sell or license it or use it as security for a loan. You can also use the registered ® symbol after your slogan to warn third parties that you are serious about protecting your trade mark rights and put them on notice that the slogan is being used as a registered trademark.
A registered trade mark can also provide a basis for further registrations of the same mark abroad and facilitate the expansion of your brand overseas.
Can I register a trade mark for a slogan that is already in use by another company?
It is risky to apply to register a trade mark that is already in use by another business. That business may already have registered the slogan and could cite their prior registered mark as a ground for opposing your application. Even if they have not registered their slogan, they could still bring a trade mark opposition against your application if they have evidence of prior use of the slogan in business. This is the case if they have registered or have been using their slogan for the same or similar goods and services to you. It may be possible to co-exist if the goods and services are very different and not in competition or complementary to each other. It is important to note that a business may have registered a slogan for a wider range of goods and services than they are currently offering and you cannot challenge this unless the mark has been registered for at least five years.
The best way to identify if your chosen slogan is free to use and/or register is to conduct trade mark clearance searches before you file your application to register the mark. You can search the Register(s) in the country in which to intend to register the mark and conduct investigations into the use of the slogan by businesses on the internet and in your field of trade. Expert registry and common law searches are offered by trade mark lawyers and you can also employ company investigation agents to conduct thorough ‘in-use’ investigations.
How to register a trade mark for a slogan
You can apply to register a slogan mark in the same way as a conventional trade mark at the UK IPO. You can file the application form online via the IPO’s website or in paper format by post. You will need to state who the owner of the registered trade mark is and provide their current address and email details. The mark should be depicted in full in the exact form in which you want it to be registered. You will also need to choose the number of classes of goods and services that you want to register the mark in and draft a description of those goods and services for each chosen class. The filing fee must be paid at the same time as the form is submitted to the IPO and can be paid by bank transfer, credit or debit card.
It is recommended that you seek the advice of a trade mark lawyer in preparing your trade mark application, particularly if there are additional aspects to your application such as the ability to claim ‘priority’ from an earlier identical registration that you may have in another country.
How much does it cost to trade mark a slogan?
The cost for a slogan application will be the same as that for a traditional word or logo mark.
The Registry fee for a registration application filed online, in 1 Class is £170. There is an extra fee of £50 for each additional class of goods and services in the application. Paper fillings cost £200.
You may have fees payable to your professional advisor for preparing and filing the application for you and dealing with any objections or oppositions that may arise in the registration process.
How long does trade mark protection for a slogan last?
Trade mark protection lasts for ten years and a mark can be renewed every ten years indefinitely by filing a renewal form and paying the renewal fee at the IPO.
What happens if my trade mark application is refused?
If your application is refused and you cannot overcome the refusal either by amending the list of goods and services, responding with arguments or submitting evidence of acquired distinctiveness of the mark, you will lose the application and the application fee. You could still use the mark in business and start to collate evidence to submit in the future to demonstrate distinctiveness acquired through use. Or you could change your mark and submit a new application for an amended mark that is more likely to be accepted by the Examiner. Your slogan may have a better chance of success if you register it in combination with your main trade mark or with a logo or even some distinctive music or jingle. You will then need to use your slogan in combination with those extra elements in the form that the mark as a whole is presented on the Register, in order to maintain your registered rights.
Can I rely on other forms of protection for my phrase?
If your chosen slogan cannot be registered, you may still be able to use it as an unregistered trade mark. The law offers some degree of protection for unregistered trade marks in the form of the common law of “passing off”. Passing off protects goodwill so you will need to have traded under the mark and established some goodwill in it, to bring an action in the courts. As well as demonstrating goodwill in the slogan, you will need to show that there has been a misrepresentation by a third party to consumers to suggest that their goods/services are yours, or your goods/services are of a particular quality or that you have some control over their goods/services. Usually, this is established by a third party using the same or a similar slogan in respect of the same or similar goods and/or services. This must lead to a likelihood of damage to your goodwill.
Passing off is more difficult to prove than registered trade mark infringement as you will need to provide evidence to prove your goodwill and it can be more costly as you need to go to the courts the courts to bring a case.
Summary
Slogans can be very effective brand identifiers and constitute valuable IP assets that a business will want to protect. It is important to register your business’s key slogans as registered trade marks if possible to make it easier to enforce your rights against third parties. It may require some additional effort and understanding of the complexities of trade mark law to overcome the initial hurdles to registration and to prepare your application so that it stands the best prospects of success. Obtaining the advice and assistance of trade mark lawyers is recommended if you are unsure as to the registrability of your slogan.
