Register a slogan as a trademark?

Register a slogan as a trademark?

By RA Christian Zierhut

If you want to reserve a slogan exclusively for yourself, the only option is to apply to the German Patent and Trademark Office for the registration of the slogan as a trademark.

Only a few years ago, however, slogans were only considered eligible if they were particularly original. Demanded was a “considerable fanciful surplus”. Mostly, the slogans were only recognized if the slogan also contained the company name or another registered trademark. Since then, the registration practice of the German Patent and Trademark Office has changed after disappointed slogan owners brought their case to the Federal Court of Justice. For a few years now, the principle confirmed by the Federal Court of Justice is that slogans are not stricter requirements than normal brands. Slogans need only be suitable for fulfilling the usual function of a brand, namely to identify the origin of a product. They have to be distinctive in other words.

The principle

When is a slogan distinctive and thus registrable as a trademark? It is easier to describe the opposite: slogans are not distinctive if they can be assigned a “content that is in the foreground for the goods in question”. Then it is to be expected that the slogan is understood only as a common phrase and not as a means of discrimination. In particular, therefore, common word sequences of the German language, general advertising and advertising statements of a general nature are not registrable. In particular, if the slogan can only be understood as an advertisement of certain features of the goods, this is against its registrability. Even longer phrases are no longer suitable as an indication of a particular company, but are usually understood only as an ordinary phrase. These rules also apply to English-language slogans, as English is required as a known foreign language and consequently even simple English slogans are not registered as trademarks by the German Patent and Trademark Office.

Indications of the distinctive character and thus of the registrability of a slogan are:

  • shortness

  • Originality and conciseness of the word order

  • Ambiguity and therefore need for interpretation.

In other words, the shorter, the more original and witty a slogan is, the more likely the German Patent and Trademark Office will allow its registration as a trademark. For example, the slogan “energy with esprit” was seen as eligible because it was “an obviously unrealistic euphoric, contradictory statement.”

The delimitation

It should be noted that brands – including slogans – can always only be registered for certain goods or services. The examination of whether a slogan is distinctive takes place separately for each product or service. A slogan may therefore be eligible for certain products, but not for others. The distinctions are often very subtle.

For example, the WEST slogan “Test it.” Was considered as registrable for smokers’ articles and matches, as the phrase “is not a concrete descriptive factual statement” referring to a consumer-relevant property of smokers and matches themselves Refers. However, “Test it.” Is not distinctive for tobacco and especially cigarettes. For this commodity range of the stimulants the slogan is only a generally understandable English-language word sequence, which is understood as an invitation to try the stimulant. In other words, for cigarettes, the call to “test” is still obvious, for matches on the other hand, so uncommon that for these goods, the slogan can be registered.

To stick to the example of tobacco: The slogan “Come together” was considered to be eligible for both tobacco and smoker articles. Here is the reference of the slogan statement to the product tobacco not so obvious that the slogan is understood as a purely descriptive call. In other words, the call to “test” a cigarette is obvious. The call to “get together”, on the other hand, is unusual, and it remains unclear how it should be understood: should one come together to smoke cigarettes of that brand? Or are smokers of cigarettes of this brand in the opinion of the manufacturer sociable people? The sense is not immediately clear in relation to the goods, but several steps of thought are necessary to connect to the goods. The slogan is therefore ambiguous and in need of interpretation and therefore registrable.

Another example: The slogan “Local Presence, Global Power” was considered as eligible for printed matter, but not for transport and tourism. For these services, the slogan is exclusively a promotional promotion of essential features of the service and therefore not registrable: Especially in the transport and tourism sector, it is of great importance for consumers that the company is present locally and there, but also worldwide Power to duly execute the contract.

endurance

In view of this difficult demarcation, it is not surprising that the three authorities responsible for registering a mark – German Patent and Trademark Office, Federal Patent Court and Federal Court of Justice – often assess the markability of a trade mark differently. Even if the German Patent and Trademark Office has refused to register a slogan, it may well be worthwhile to appeal against the decision in order to have the Federal Patent Court or Federal Court of Justice confirm the registrability of the slogan.

We check your slogan for brand capability

  1. First, make a list of the goods or services for which the slogan is to be used. An orientation here can be the class division of the brand classes, which are available on the website of the German Patent and Trademark Office (http://www.dpma.de/suche/klass/wd/einteilung_anm.html).
  2. We check for every single product or service whether the slogan can be a descriptive statement. If a descriptive content is in the foreground, the German Patent and Trademark Office tends rather to a view unfavorable to the applicant. The more obvious and concrete descriptive content is, the more likely it is to be prepared to receive a negative decision from the German Patent and Trademark Office and appeal against it in order to convince higher instances of the protectability of the slogan.
  3. One should not lose sight of whether the same or a similar slogan has already been protected as a trademark. A search for identical slogans is worth a look at the database of the German Patent and Trademark Office (https://dpinfo.dpma.de/index.html) . However, in Germany, in addition to the German trade marks, the European Community trade marks are valid, which can be searched at http://oami.eu.int/de/default.htm , as well as the international IR marks available at http: // www. wipo.int/ipdl/en can be researched. However, the free websites do not offer a similarity search. We can carry out a professional similarity search for you. We will gladly make you an offer.
  4. Even if the slogan has already been protected, this does not mean that the slogan is “off”. It may be possible to obtain the consent of the proprietor of the earlier mark for registration or to conclude an agreement on the coexistence of the marks. After 5 years have elapsed after registration, marks are also ready to be deleted if they have not been used. This should also be checked for possible conflicting earlier marks in order to have them deleted ex officio, at least in part for the unused goods and services.

The following slogans were considered protectable by the German Patent and Trademark Office:

sloganGoods / service
Because every drop of water countsMeasuring apparatus and measuring instruments
Proximity is goodPower plants, energy and district heating
Ready for take off shoreWind farms and wind turbines
Everything else is Wurschtmeat products
The end of the compromisesvehicles
Best values ​​for residual valuesOperation of an e-commerce platform for the sale of motor vehicles
Everything in the green area. Everything.beer
One for All and One for OneMedical instruments
Stinginess is cool
Furniture that does not existFurniture
Way of life in Rhine culture
Make me smileAdvertising, Telecommunications
We make your networktelecommunications
The best of springfoods
From islands we make worldsOnline services
Shake your millionsCompletion stamp of lottery tickets
Get up. Stay up.beverages
The beautiful is the splendor of truthPrecious metals, jewelery and watches
We will seetelecommunications
Capital in stones is better than money in notesServices of a developer
Play your life. Win your future.finance
Shake your millionsCompletion stamp of lottery tickets
A transmitter with face
For your eyes onlypostcards

The following slogans were considered by the German Patent and Trademark Office as not registrable:

sloganGoods / services
See the feelingScanners, cameras and cameras
The thinking lightlamps
When call light!Repair of street lighting
Your personal bankfinancial transactions
We bring chemistry to its bestChemicals
Advise, move, inspireRental and repair of construction machinery
Everything is just about youMaintenance and repair service
Shoes are our passionFootwear, leather / imitation leather
We just make beautiful bathrooms and simple bathrooms beautifulinstallation work
Your success is our ambitionPrinted matter, advertising, business management
Spice up your sex lifeOnline services
Do it yourselfBuilding material, hand tools
The pure solutionChemicals
Travel and seaArranging travel
There is somethingPreserved fruits and vegetables
A nice piece of naturefoods
The secure feeling of doing the right thingReal Estate Business, Real Estate Broker Services
Trust is good, compare is betterFinance, monetary affairs
Leaders in decisionStrategic consulting for companies and executives
Nice to fall asleep – wake up nicelybeauty care
Loud (strong) girlsTeaching aids, games, education and self-defense seminars for women and girls
The human factor in lawLegal advice and representation
Man, is that cheapElectrical appliances, furniture, carpets
All-In-OneInsurance, finance and real estate, monetary affairs
Live music at its best Oh La LaMusical / artistic performances
Suns to measureOperating tanning salons
Music for all sensesEntertainment, cultural
Activities among others
Everything that makes you smartPrinted matter, instructional and teaching materials, among others
Build like the smart onesBuilding materials, locksmiths and others
Good design is more than just a matter of tasteadvertising
2018-09-10T14:54:37+00:00