The mark consisting of advertising slogans is a registrable trademark on condition that it has distinctive character, namely – regardless of its promotional meaning – on condition that it has something that allows the public to perceive it as an indicator of the commercial origin of the designated goods and/or services.
Think Different of Apple or I’m lovin’ it of Mc Donalds are examples of marks consisting of advertising slogans.
With regard to the European Union trademark, article 4 of the European Union trademark regulation n. 2017/1001 provides that:
“A EU trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sound”
Therefore nothing forbids to register as a trademark an advertising slogan.
EU case law agrees that:
“As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded by virtue of such use”
(EU General Court of 29 January 2015 in Case T-59/14, paragraph 19, judgement of the Court of Justice of January 21, 2010 in Case C-398/08, paragraph 35).
The distinctive character of the marks consisting of advertising slogans should not be valued by applying criteria more restrictive than criteria used for other categories of marks (Case C-398/08, paragraph 36). In this regard, the Court stated that:
“Difficulties in establishing distinctiveness which may be associated with word marks consisting of advertising slogans because of their very nature – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness”
(Court of Justice, case C-398/08, paragraph 38; General Court, Case T-59/14, paragraph 21).
First of all, the EU case-law is concerned to give a definition in negative, namely to say which are the requirements that do not necessarily must be present in an advertising slogan in order to be registered as a trademark.
In detail, judgments in question held that firstly
“An advertising slogan cannot be required to display “imaginativeness” or even “conceptual tension which would create surprise” and “so make a striking impression in order to have the minimal level of distinctiveness”
(Court of Justice, C-398/08, paragraph 39; General Court, T-59/14, paragraph 22)
In addition, the Court of Justice states that:
“It must be held that the mere fact that a mark is perceived by the relevant public as a promotional formula, and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient, in itself, to support the conclusion that the mark is devoid of distinctive character” (C-398/08, paragraph 44)
Also, the Court affirms that:
“it should be noted that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposed of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public as a promotional formula and as an indication of the commercial origin of goods and services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character”(C-398/08, paragraph 45).
In light of the above, it follows that the mark consisting of an advertising slogan, regardless of its promotional meaning, must have something that allows the public to perceive it as an indicator of the commercial origin of the designated goods and/or services. That is the distinctiveness of this type of mark.