Slogans as Trademarks – European and French Practice

By Franck Soutoul and Jean-Philippe Bresson

Businesses, constantly searching for unique ways to identify their goods and services from that of the competition, are registering ever more creative trademarks – from a specific color, shape, sound, moving image, taste or smell to slogan marks. This article, by returning contributors Franck Soutoul and Jean-Philippe Bresson, of INLEX IP Expertise, and reporters for IP TALK, France, highlights some of the difficulties of registering slogan trademarks in Europe and France.

“Parce que vous le valez bien”™ (Because you’re worth it), “Just do it”™, “Le contrat de confiance”™ (the contract of trust)… These slogans grab attention and are sometimes better known than the branded products themselves. Slogans are a marketing and communication tool par excellence and directly impact consumers by encouraging them to choose certain goods or services over others.

But legally speaking, slogans are at the intersection of several converging intellectual property (IP) rights and the source of many headaches. What is the best way to protect a slogan? How can a slogan be registered as a trademark? If registered as a trademark, how is similarity with another slogan determined? How is a slogan combined with a verbal mark perceived in terms of comparing signs? What precautions need to be taken for slogans created by advertising agencies?

As slogans are tools for gaining market share, involving creative, financial and commercial investment, choosing the most appropriate method of protection is key. Trademark and copyright protection can make a slogan an IP asset, and legislation against unfair competition may be used as a defensive approach. However, each of these means of protection involves a certain risk.

Protection as a trademark

A slogan is a separate category of sign, and is different from the standard trademark. Slogans can, in principle, be protected under trademark law, although they are not explicitly listed among the signs likely to constitute a trademark. However, Article L. 711-1 of the French Intellectual Property Code provides for “combinations of words,” and Article 4 of Regulation No. 207/2009 on the Community trademark refers to “words” in a broader sense. Slogans must conform to the same requirements as any other trademark and, in particular, should not be generic in nature or describe the goods or services themselves, and must have their own distinctive character.

The European Union’s Office for Harmonization in the Internal Market (OHIM) has been much stricter in assessing the distinctiveness of slogans than the French trademark office and courts. Community case law indicates that a more stringent procedure is used to determine slogan distinctiveness than that used for conventional verbal marks. Among the slogans refused registration in 2008 and 2009 were:

• “Passion for wood” for building materials;
• “Leave an impression” for bar, entertainment and advertising services;
• “Everywhere on earth” for transport services;
• “Religieuse de Rêve” (A dream pastry) for pastries;
• “Play for your country” for services for arranging golf tournaments; and
•  "Night of champions” in particular for entertainment services.

Invariably, OHIM’s reasoning on refusals was that the public would be likely to understand those expressions as advertising messages, underlining the positive aspects of the goods and services, rather than as signs identifying the goods and services themselves (the function of a trademark). One of the few exceptions, the “Play with nature”TM slogan was accepted by OHIM to designate food and clothing supplements. The European Court of Justice also issued a decision in January that the Audi slogan “Vorsprung durch Technik” (Advancement through technology) could mature into registration as it was not necessary for a trademark slogan to display “imaginativeness” or “conceptual tension creating surprise and thus making a striking impression.”

On the other hand, the French Office is more flexible regarding slogan registration. The following examples have been recognized as distinctive, and accepted as trademarks:

• “Le monde sans fil est à vous”TM (The wireless world is yours) for telephony services;
• “Quoi de plus naturel?” TM (What could be more natural?) for milk products; and
• “Vous avez le droit” TM (You have the right) for magazines and printed matter.

Protection facilitated by copyright

Even if slogans are not on the list of creations likely to constitute intellectual works (Article L112-2 of the French Intellectual Property Code provides a non-restrictive list of works), they are copyrightable in France provided they are original. For instance, the slogan “C’est trop d’la bulle” (It’s too much fun), could not be registered as a trademark by chewing gum company Wm. Wrigley Jr., as an earlier copyright claim was recognized by the court because: “introduceing a play on words into this expression, an expression well-known to young teenagers and particularly relevant to that audience, gives this slogan novelty and originality, reflecting the personality of its author.”

But contrary to trademarks where the right stems from an easily identifiable registration, copyright systematically belongs to the creator of a work, and that may be a problem if the slogan’s creation was outsourced to an advertising agency. In France, to obtain copyright from an agency, a business must follow a formal path by which rights are assigned and an appropriate remuneration determined. This is a required step to ensure sustainable use of the slogan, as well as the possibility to act against third parties and to file the slogan as a trademark. For instance, the company BuyCentral was only recognized as the right holder of “Comparez les doigts dans le net” TM (Compare fingers in the net) thanks to the assignment of the slogan rights in the contract binding them to Saatchi & Saatchi.

Unfair competition claims

It is also possible in France to defend slogan rights by filing an unfair competition claim, in which civil liability rules are applied to commercial disputes. A business can use such a claim to assert, for example, that an imitation advertising slogan aimed to benefit a competitor’s investments.

Air France KLM successfully used such an approach against RyanAir. The French Court of Appeal held that RyanAir’s slogan “Faire du ciel l’endroit le moins cher de la terre” (Making the sky the cheapest place on earth) – a slight modification of the Air France slogan “Faire du ciel le plus bel endroit de la terre” TM (Making the sky the best place on earth) – constituted unfair practice because it repeated and distorted the well-known Air France phrase, and that RyanAir thereby benefited from Air France’s substantial advertising campaigns.

The three possible means of protecting slogans can be sought concurrently and may all be referred to in litigation. Owning a trademark should not prevent the holder from also seeking copyright protection of the slogan, which may prove useful, for example, if a trademark is canceled during a dispute.

Assessment of risk

The assessing of similarity between two slogans is not carried out using quite the same procedure as that for “conventional” verbal marks. In the case of slogans, it is rare, even exceptional, for signs to be devoid of rational meaning; that aspect therefore carries more weight than it does for other signs.

Assessing the similarity of two trademarks comprising slogans depends largely on the estimated distinctiveness of the slogans. The more distinctive the earlier filed slogan is considered, the greater its scope of protection. So, even where differences between slogans are significant, the risk of confusion can be qualitatively determined. Naturally, the level of distinctiveness (and therefore the possible similarity between two slogans filed as trademarks) depends on which court is hearing the case as demonstrated in the following:

• The French trademark office considered “Bien dans ma vie” TM (Happy in my life) and “Bien dans ma maison” (Happy in my home) to be similar, in that the structure of the phrase and the image evoked were comparable. The first slogan “Bien dans ma vie” was said to be distinctive.
• The slogans “Manger bien pour vivre mieux” TM (Eat well to live better) and “Bien se nourrir pour mieux vivre” TM (Eat well to live better) for foodstuffs were considered different, the first sign having been evaluated as weak in terms of distinctiveness and appearing to be a promotional slogan to encourage consumers to adopt a healthy lifestyle.

But as is the case with all trademarks, the better known the slogan, the greater its level of distinctiveness.

When it comes to comparing translated slogans, assessment typically depends on the territories and consumer groups targeted. The French Court of Appeal held that French consumers were likely to make the connection between the expressions “Skin breakfast” TM and “Petit déjeuner de la peau” (Breakfast for the skin) and therefore judged them similar. On the other hand, OHIM considered that French and Belgian consumers would not confuse the two slogan trademarks “C’est prouvé. Clarins rend la vie plus belle” TM (It’s a fact. Clarins makes life more beautiful) and “Douglas – makes life beautiful” TM as only a small percentage of Belgian consumers would understand the meaning of the French expression.

But businesses should be aware that while the French trademark office will register trademarks comprising slogans more readily than OHIM, the scope of legal protection remains limited when comparing two trademarks where only one of them includes a slogan. For example, the French trademark office considered the following to be confusingly similar:

• "Oui” TM (Yes) and “Oh oui, oser d’autres plaisirs” (Oh yes, dare to try other pleasures) and
• Synergie TM and “SynergyGroup, le groupement de compétences” (SynergyGroup, the association of skills), as the expression added on “is of secondary importance and will be perceived more as a slogan.”

Slogans – at crossroads

Slogans do not directly designate a good or service but support it in commercial terms by enabling the public to link a slogan to a specific company. They are also the first line of communication with the consumer. Moreover, they represent significant investment and effort by companies to draw consumers to their products. They therefore form a specific category of signs, as is the case for three-dimensional marks.

Their specific nature makes it important to ask the right questions regarding the substance of a slogan before seeking to protect or defend it. While there is no ideal, one-size-fits-all approach, existing tools and their use by the French courts and trademark office and OHIM, reveal emerging trends and call for a case-by-case analysis in adopting the most appropriate strategy.

Acknowledgement Marcus Höpperger, WIPO Brands and Designs Division