Can Slogans be registered as Trademarks?

By Thein Thein Win

Slogans are memorable mottos or phrases used often in commercials as a tool to subconsciously persuade the public to think of a certain brand, product or service whenever they hear or see the slogan. Moreover, a slogan can affect how the public or consumers perceive your products or services at immediate face value.

Think of the slogans used in the automotive industry:

BMW	The Ultimate Driving Machine
ASTON MARTIN	Power, Beauty and Soul
HONDA	The Power of Dreams
FIAT	Driven by Passion
KIA	The Power to Surprise
MERCEDES-BENZ	The Best or Nothing
VOLVO	Volvo. For Life.

Seeing the advantages slogans have for businesses, businesses would naturally want to keep their slogans for themselves, but can they? The short answer is yes, slogans can be protected under trademark law, as they are indicators of the source of origin of the product or services.

While slogans play a part in promoting your products or services, sometimes the slogan may just consist of common words describing the products or services. So, whether or not a slogan can be registered as a trademark highly depends on the distinctiveness of the slogan.

In order to register a slogan as a trademark, it must be either inherently distinctive and creative, or the slogan needs to have a secondary meaning on its own to immediately call a product or service to mind. This means that the brand owners are responsible to prove that the slogan they wish to protect has acquired a distinctive character before the trademark application is filed.

Secondary meaning implies that the mark has acquired distinctiveness among consumers or the mark has transcended the literal meaning itself to become associated with the source. Think L’Oréal Paris’ timeless slogan, “Because I’m worth it” (later changed to “Because you’re worth it” and now “Because we’re worth it) – this slogan was revolutionary when it was coined in 1971 and has since garnered a strong secondary meaning. Hence, registering a slogan as a trademark can strengthen the connection between the message you want to send and your brand’s customers, which in turn adds value to your products or services.

However, not every slogan can be registered as a trademark. Common phrases that do not have other meanings, for example, “Why don’t we go?” for transportation services, informational or motivational phrases not intended for profit, like “Let’s Help!” for a volunteer group, or generally indistinctive slogans cannot be registered, e.g. “Justin Bieber is a singer”.

If you wish to get legal protection or to apply for the registration of your slogans as a trademark, the outcome may depend on the country of filing. In the USA and the EU, it is relatively easy to register a slogan, while in Asian countries it may be more complicated due to translation issues and more stringent Trademark Examiners at the local IP Offices. In some countries in Latin America, slogans may not be registered or are only registrable if associated with an earlier registered trademark.

So if you have a creative and distinctive slogan – what are you waiting for? Consider applying to register it as a trademark. A good slogan not only effectively represents your brand but also helps gain the commitment of your targeted customers for a long, long time. It is an asset worth protecting.

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Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.