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Wednesday, 11 January 2006

UK REGISTRY GIVES FRESH GUIDANCE ON SLOGAN MARKS


The UK Trade Mark Registry's Practice Amendment Notice PAN 1/06 , issued on 5 January 2006, affects UK examination and classification practice in handling applications to register slogans as UK trade marks. The main points are as follows:

* Slogans are registrable as trade marks, provided that they have the capacity to individualise the goods or services of an undertaking. This means they must be distinctive and not descriptive, just like any other word marks.

* Slogans serving a promotional function which is not obviously secondary to any trade mark meaning will be objectionable because "…average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans".

* Slogans that the public doesn't view as trade marks aren't trade marks. Slogans may fall alongside other non-conventional trade marks in being marks that the relevant public is slower to recognise as indicating the product of a single undertaking. However, they don't need to contain any additional element of imagination or an additional element of originality to be acceptable.

* Slogans will face an objection if they are comprised of a word combination that an average consumer would regard as a normal way of referring to the goods or services or of representing their essential features.

* Allowance will be made for the fact that, in advertising, it is customary to use short hand when promoting the goods or services. Thus WHERE ALL YOUR FAVOURITES COME TOGETHER was refused for chocolate confectionery on the grounds that it was a natural abbreviation for the longer expression ‘This is where all your favourites come together in one box’.

* Ambiguity may enhance the prospects of registrability. A slogan which has two meanings will not however be registrable if one of them is a description of the goods or services. Thus WE SET THE HIRE STANDARD was refused for car hire services despite the possible phonetic alternative meaning.

* A message that could apply to any undertaking is not therefore capable of individualising the goods or services of one undertaking. Any objection will identify the alternative message (to a trade mark message) conveyed by the mark.
The IPKat congratulates the Registry on its policy of issuing guidance of this nature, replete with examples, to give applicants and opponents some clue as to when it's worth being persistent and when it's worth just giving up.

A full list of UK Trade Mark Registry Practice Amendment Notices may be found here
Generate zany slogans here
Advertising Slogan Hall of Fame here

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