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.
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:
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.”
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.
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
- 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).
- 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.
- 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.
- 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:
|slogan||Goods / service|
|Because every drop of water counts||Measuring apparatus and measuring instruments|
|Proximity is good||Power plants, energy and district heating|
|Ready for take off shore||Wind farms and wind turbines|
|Everything else is Wurscht||meat products|
|The end of the compromises||vehicles|
|Best values for residual values||Operation of an e-commerce platform for the sale of motor vehicles|
|Everything in the green area. Everything.||beer|
|One for All and One for One||Medical instruments|
|Stinginess is cool|
|Furniture that does not exist||Furniture|
|Way of life in Rhine culture|
|Make me smile||Advertising, Telecommunications|
|We make your network||telecommunications|
|The best of spring||foods|
|From islands we make worlds||Online services|
|Shake your millions||Completion stamp of lottery tickets|
|Get up. Stay up.||beverages|
|The beautiful is the splendor of truth||Precious metals, jewelery and watches|
|We will see||telecommunications|
|Capital in stones is better than money in notes||Services of a developer|
|Play your life. Win your future.||finance|
|Shake your millions||Completion stamp of lottery tickets|
|A transmitter with face|
|For your eyes only||postcards|
The following slogans were considered by the German Patent and Trademark Office as not registrable:
|slogan||Goods / services|
|See the feeling||Scanners, cameras and cameras|
|The thinking light||lamps|
|When call light!||Repair of street lighting|
|Your personal bank||financial transactions|
|We bring chemistry to its best||Chemicals|
|Advise, move, inspire||Rental and repair of construction machinery|
|Everything is just about you||Maintenance and repair service|
|Shoes are our passion||Footwear, leather / imitation leather|
|We just make beautiful bathrooms and simple bathrooms beautiful||installation work|
|Your success is our ambition||Printed matter, advertising, business management|
|Spice up your sex life||Online services|
|Do it yourself||Building material, hand tools|
|The pure solution||Chemicals|
|Travel and sea||Arranging travel|
|There is something||Preserved fruits and vegetables|
|A nice piece of nature||foods|
|The secure feeling of doing the right thing||Real Estate Business, Real Estate Broker Services|
|Trust is good, compare is better||Finance, monetary affairs|
|Leaders in decision||Strategic consulting for companies and executives|
|Nice to fall asleep – wake up nicely||beauty care|
|Loud (strong) girls||Teaching aids, games, education and self-defense seminars for women and girls|
|The human factor in law||Legal advice and representation|
|Man, is that cheap||Electrical appliances, furniture, carpets|
|All-In-One||Insurance, finance and real estate, monetary affairs|
|Live music at its best Oh La La||Musical / artistic performances|
|Suns to measure||Operating tanning salons|
|Music for all senses||Entertainment, cultural|
Activities among others
|Everything that makes you smart||Printed matter, instructional and teaching materials, among others|
|Build like the smart ones||Building materials, locksmiths and others|
|Good design is more than just a matter of taste||advertising|