Trademark Protection for Slogans and Claims

The question if and which slogans and claims can receive trademark protection is topic of a lot of disputes in Germany and throughout the European Union. Introduction The protection of slogans is very interesting for brand owners, because slogans are a key element in advertising. The consumers identify themselves with the slogans or associate a slogan with certain products and services. Therefore, slogans are eye catchers and indirectly help to encourage people to choose certain goods or services over others. In principle, slogans can be protected as trademarks. However, many applications fail if they are purely descriptive or lack distinctiveness. Examples The easiest way to outline the difficulties of getting slogans or claims registered as trademarks, is giving some examples.     1. Test it The German Federal Supreme Court (BGH) decided that the slogan „Test it“ for matchsticks of the cigarette producer WEST is protectable, because the combination of words does not describe a special characteristic of them. But, in contrast to matchsticks, the slogan is not protectable for cigarettes because in this connection the slogan is just a demand to taste cigarettes (BGH, I ZB 34/98; 23.11.2000).     2. Das Prinzip der Bequemlichkeit ("The Principle of Comfort") One of the first cases decided in relation to the protection of slogans started with the application for registration as a Community Trademark for the slogan “Das Prinzip der Bequemlichkeit” (The Principle of Comfort) by Erpo Möbelwerke. The first and second instance rejected the protection of the slogan and argued that it did not display any element of imaginativeness. Therefore, the slogan lacks distinctiveness and is not protectable. The European General Court (EGC) overturned the former decisions, because it is not appropriate to apply criteria to slogans, which are stricter than those applicable to other types of trademarks. Therefore, it does not matter that the slogan does not have any element of imaginativeness. In the last instance, the European Court of Justice (ECJ) stressed that the correct test for whether a mark of any kind, including slogans, is devoid of distinctive character, was to ask if the trademark is an indication of the origin of the product (C-64/02 P; 21.10.2004). Thereby, the ECJ cnfirmed the decision of the EGC. Finally the slogan was registered because the slogan “Prinzip der Bequemlichkeit” is to be assessed as being distinctive.     3. Get a break – Get a KitKat The slogan “Get a break – Get a KitKat” is very popular, and nearly everybody connects it with the chocolate bar KitKat. However Nestle, who is the owner of the brand “KitKat” had some difficulties by trying to register the phrase “Have A Break” as a separate trademark. The fundamental problem was that Mars, another chocolate producer, thought the phrase it not distinctive. Therefore, the case went to different UK courts. They all decided that the phrase cannot get protected, because the public is connecting ”Have a break” with KitKat but not with Nestle. But only if the slogan is an indication of the origin, can it receive protection as a trademark. Finally, Nestle appealed to the Court of Appeal, which denoted the following question to the European Court of Justice (ECJ): “May the distinctive character of a mark … be acquired following or in consequence of that use of that mark as part of or in conjunction with another mark?” The answer of the EJC was positive. Therefore, Nestle received protection for the slogan “Have a break” in 2012 (C-353/03; 07.07.2005).     4. Tame it The slogan „Tame it“ for beauty and hair care products is not distinctive, because it is just an invitation to use the products. Therefore, the slogan is just an indication of the positive effect of the product, but not for the origin (T-471/07; 15.09.2009).     5. Vorsprung durch Technik ("Progress through Technology") The slogan „Vorsprung durch Technik“ (Progress through Technology) of Audi got registered because the European Court of Justice (ECJ) overruled all decisions of previous instances. The slogan conveys an objective message to the effect that technological superiority enables better goods and services to be manufactured and supplied. The special aspect about this judgment is that the ECJ is of the opinion that being an objective message, does not however exclude the possibility that the slogan could also be an indication for the origin of the product. Because the slogan is imaginative, new and famous, the ECJ finally came to the result that “Vorsprung durch Technik” is protectable (C-398/08 P; 21.02.2010).     6. Leistung aus Leidenschaft ("Power to Perform") The slogan “Leistung aus Leidenschaft” (Power to Perform) of the Deutsche Bank could not get registered because the European General Court (EGC) decided that the slogan just gives the impression that the Deutsche Bank is performing their services with special enthusiasm. Therefore, it is just descriptive. Also, it is not as imaginative or famous as “Technik durch Vorsprung” and thereby it also cannot serve as an indication of the origin of the product so that the slogan is not protectable (T-539/11; 25.03.2014). Conclusion The success of a trademark application of slogans and claims as trademarks is always uncertain. As the examples show, the result is often not clearly predictable. If is worth applying for the slogan or claim in order to receive protection. However, it is advisable to receiveprior advice by a knowledgeable IP and trademark attorney