The question of the protection of slogans, which are often used as trademarks by companies, has been at the centre of a number of disputes on both sides of the Atlantic recently. “Can slogans qualify for trademark protection?” and “How can brand owners obtain registration?” are two questions that courts in Europe and the USA have been facing recently.

Slogans are key elements in advertising campaigns as brand owners hope that the public will associate the slogan with their products or services and, therefore, to their brand. For this reason, the question of protection is of high importance.

However, brand owners are facing difficulties as European and US authorities often refuse requests on the grounds that a slogan is purely descriptive of the products or services it promotes, or lacks distinctiveness. In fact, EU and US legislation states that a brand or slogan cannot be registered if it is of an exclusively descriptive nature or lacks distinctiveness.  
 
Example
 
To take the case of the slogan “Where all your favourites come together” . This slogan, in relation to chocolates, was rejected by the UK Trade Mark Registry on the grounds that is was “just a sequence of common dictionary words” which “would easily come to mind in order to convey a promotional message for confectionery”.

A slogan could successfully overcome the first objection and still be rejected the grounds of lack of distinctiveness. The UK Trade Mark Registry also refused protection to the slogan “Say it with chocolates” as this did no more than simply promote the purchase of chocolates as a gift. The rationale of the Registry is that if the slogan has a “neutral origin” that is, it gives no guarantee about the trade source but simply informs consumers about the nature of the goods or services, it is not distinctive.

In order to overcome these objections brand owners have to prove that the slogan they wish to protect has acquired a “secondary meaning” on its own. This means that a distinctive character of the slogan has resulted from the use made of it, before the trademark application was filed.

A slogan is thought to have acquired a secondary meaning if the brand owner can demonstrate in the trademark application that the use of this slogan by another party would cause confusion amongst consumers as to the producer or provider of the goods or services. 
 
“Have A Break”: Nestlé v. Mars
 
The slogan “Have A Break” is quite well known and is usually associated with the chocolate bar “Kit Kat”. But does the use of this name also make consumers think of the brand Nestlé as Kit Kat is a Nestlé brand? In other words has the phrase acquired the requested “secondary meaning”?

Nestlé, the owner of the registered trademark “Have A Break… Have A Kit Kat”, is currently facing this legal question in trying to register, since March 1995, the phrase “Have A Break” as a separate trademark. The rival chocolate manufacturer Mars is objecting to this registration, claiming that the phrase has no distinctive character.

In the Nestlé v. Mars case, the courts upheld the UK Trade Mark Registry decision not to allow registration of the separate phrase as a trademark on the grounds that even if Nestlé successfully proved that the public associated “Have A Break” to Kit Kat chocolate bars, it did not provide evidence that the public also associated this with the brand Nestlé. The UK courts considered that “Have A Break” did not guarantee the source of the products and therefore did not qualify for trademark protection.

Nestle appealed to the Court of Appeal.

Owing to the uncertainty as to the application of article 3(3) of the Directive, the Court of Appeal referred the following question to the European Court of Justice (ECJ): 'May the distinctive character of a mark … be acquired following or in consequence of that use of that mark as part of or in conjunction with another mark?'

The ECJ has rendered a positive answer to the Court of Appeal question, on July 2005 (i.e. giving right to Nestlé).

The case is now again in front of the Court of Appeal for a determination of the issue on the basis of the evidence filed.

by esa.int