A snappy, unforgettable slogan significantly enhances your brand identity. In an increasingly crowded market, a catchy slogan helps your brand stand out from the crowd, boosts your market share and, ultimately, increases your profitability.
The potential impact of a slogan is illustrated perfectly by Nike’s iconic “Just Do It”. Those three simple words resonated so powerfully with the public that they catapulted Nike onto the Forbes List of Most Valuable Brands and allowed the company to more than double its share of the US sports shoe market.
In this article, Ben Evans, Head of Trade Marks at Harper James, discusses the different steps you can take to prevent unauthorised use of your slogan.
How can you use a trade mark to stop the unauthorised use of your slogan?
Well-known slogans are instantly recognisable, making them a prime target for copycats, who use them to confuse consumers into believing their goods are yours. Their deceit can dilute your brand, affect your sales, damage your reputation, and cause a myriad of other problems. The importance of protecting your slogan from unauthorised use cannot be overstated. The quickest and most effective way to do this is by registering your slogan as a trade mark.
A trade mark is often called a “badge of origin” because it instantly informs consumers where the goods originate from. Trade marks are incredibly powerful rights, and by registering your slogan as one, you gain a monopoly over its use in connection with specific goods or services. If third parties use your slogan or something similar without permission, you can rely on your trade mark rights to force them to stop. Sometimes, this involves bringing infringement proceedings against the third party, asking the court to prohibit them from using your slogan in the future and order them to pay damages to compensate you for any harm their activities have caused. Often, though, trade mark infringement disputes are settled before proceedings are issued. Sometimes, a formal legal letter from a firm of trade mark solicitors pointing out your trade mark rights is enough to persuade a copycat to stop using your slogan.
Can you register your slogan as a trade mark?
Yes, you can register your slogan as a trade mark provided it meets the trade mark registration criteria. However, in the case of slogans, this can sometimes be tricky. A key eligibility requirement for trade mark registration is that the proposed mark be distinctive and capable of distinguishing the owner’s goods from those of others. When your proposed trade mark is a slogan, this can be an uphill struggle since the public often views them as advertising messages and disregards them.
The line between a slogan that is a mere advertising message and one that acts as a badge of origin can be a fine one. Whether or not your slogan will achieve trade mark registration depends mainly on the public’s perception of it. Some slogans, such as Nike’s “Just Do It” and L’Oréal’s “Because I’m Worth It”, have little meaning other than in connection with the brand they relate to, and so satisfy the distinctiveness requirement fairly easily. For others, such as Audi’s “Vorsprung Durch Technik”, the transition from advertising tagline to badge of origin isn’t quite as smooth. Whilst the slogan is protected as a trade mark now, it took Audi seven years and countless court hearings to convince judges that the strapline — which translates as “progress through technology” — was distinctive enough to qualify as a trade mark.
If your slogan is rejected as a trade mark for being non-distinctive, all is not lost. If you can prove that it has become synonymous with your brand, you may be able to register your slogan based on its “acquired distinctiveness”.
Can you stop the unauthorised use of your slogan without a trade mark?
Protecting your slogan as a trade mark is, by far, the most effective way of protecting it. If you haven’t been able to secure trade mark protection for your slogan, a law known as “passing off” might offer assistance in some situations.
Passing off aims to prevent third parties from exploiting someone else’s goodwill and reputation for their own gain. So, if someone uses your slogan in connection with their goods, you might be able to rely on passing off to force them to stop. Passing off cases are notoriously difficult to prove. Strict legal criteria apply, which often require extensive evidence to fulfil.
In contrast, trade mark infringement can be relatively straightforward to establish. You do not need to prove your goodwill in the slogan since your trade mark speaks for itself. If the copycat uses a slogan identical to yours, all you need to establish is that the copycat is using it in relation to the goods your trade mark is registered for. If the slogan they are using is not identical to yours but is similar, there is an additional requirement that their use has confused consumers.
It is always advisable to seek trade mark protection for your slogan wherever possible. There are costs involved in obtaining a trade mark, but the relatively low initial outlay is dwarfed by the significant protection your trade mark will provide and the peace of mind you will get knowing that your crucial business asset is protected against unscrupulous copycats.
By Ben Evans, Head Of Trade Marks At Law Firm Harper James
