Slogan

A slogan is a short and striking phrase used in commercial communication to promote a product, a service or a business. It may be filed as a word mark, since Article L. 711-1 of the French Intellectual Property Code excludes no sign capable of clear and precise representation, and may be protected by copyright if it is original. Its protection as a trade mark turns on a single question, whether the public will see in it anything other than an advertising message.

Distinctive character of the slogan

The Court of Justice of the European Union holds that slogans are not subject to stricter criteria than other signs, but that the perception of the relevant public is not necessarily the same, since consumers are not in the habit of presuming the origin of goods from a promotional phrase. A slogan lacks distinctive character where it amounts to no more than an ordinary laudatory message, praising a quality of the product or inviting purchase. It is, on the other hand, registrable where it has a certain originality or resonance, sets off a cognitive process or an element of surprise, or has several meanings, so that the public remembers it as an indication of origin. A slogan that describes a characteristic of the goods also falls foul of descriptiveness, however catchy its form.

Cumulation with copyright and unfair competition

A slogan may be protected by copyright regardless of any filing, provided it is original, that is, it bears the imprint of its author’s personality. The courts apply this condition strictly, since short phrases often belong to everyday language or to an idea that is free for all to use. Where neither trade mark nor copyright protection is available, the copying of a slogan by a competitor may be sanctioned as unfair competition or free-riding, where it creates confusion or captures the value of an advertising campaign without any outlay. Evidence of the investment in the phrase and of its reputation is then decisive.

Filing and exploitation

Filing a slogan as a trade mark follows the ordinary rules, and the examiner assesses distinctiveness in relation to each of the goods or services designated, so that a phrase may be accepted for some classes and refused for others. The owner must then make genuine use of the slogan as a trade mark, which raises a difficulty where the phrase is only ever used alongside another mark, in advertising, and never alone on the product. The offices and the courts accept that a slogan used together with a main mark may be the subject of genuine use if the public perceives it as an independent sign of origin, but the burden of proof lies with the owner.

Key points

A slogan may be filed as a trade mark if it is perceived as an indication of origin and not as a mere promotional message, and may be protected by copyright if it is original. Laudatory or descriptive phrases are refused. Before filing, test the slogan against each of the goods, plan its actual exploitation as a trade mark, and keep evidence of the advertising investment for any unfair competition claim.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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