Matthias Rößler - 6. October 2023

Trademarks as an indication of origin

Brand names and logos are associated with companies and their products. An advertising slogan is an equally decisive factor for recognition or origin.

Famous slogans that have been successfully registered as EU trademarks include "Just do it" (Nike), "Think different" (Apple), "Vorsprung durch Technik" (Audi) or "i'm lovin it" (McDonalds).

In order to register slogans as trademarks, it must be proven that they are not only descriptive or laudatory of the goods and services, but often also that they are sufficiently different from the usual signs of other companies.

Protect advertising slogans

Applicants who wish to register a slogan as a trademark in the trademark register must therefore prove its distinctiveness. In addition, a slogan must not be descriptive, which means that it must not describe either the nature or the intended purpose of the goods or services applied for.

However, assessing the distinctiveness of a slogan is not always easy in practice.

Such slogans can be excluded from registration due to lack of distinctiveness if they are perceived by the usual customers only as a positive advertising message, but not as an indication of the commercial origin of the goods and services.

It should also be noted that the examination of whether a slogan is distinctive must take place separately for each product or service. A slogan may be registrable for certain products, but not for others.

What can increase the likelihood of success for trademark registration of a slogan?

Distinctiveness of slogans

The chance that a slogan will be regarded or judged as distinctive (and thus protectable under trademark law) is regularly increased if it follows several of the following guidelines:

  • The slogan should be short.
  • It should allow for multiple meanings and thus room for interpretation regarding its meaning.
  • He should have a special originality and conciseness.
  • It should have a play on words or unusual linguistic or stylistic devices.

The more of these specifications apply to the slogan, the greater the chance of being able to have the slogan protected as a trademark.

Registration of slogans as an EU trademark

The central application for an EU trademark (also EU trademark) is made through the European Union Intellectual Property Office (EUIPO).

If the Office determines during the examination of the application that there are no absolute grounds for refusal (such as lack of distinctiveness), the slogan can be registered in the trademark register in the corresponding class of goods and/or services.

Caution: The Office does not check whether a conflict with already existing trademarks is caused in connection with the trademark application. The application for a slogan should always be preceded by a preliminary search to rule out the possibility that identical or similar slogans exist as trademarks. (See also: Relevance of a preliminary trademark search, 5/2019).

The application grants the owner unitary, EU-wide trademark protection. If no opposition is filed within 3 months of registration, the applicant is considered the trademark owner, whose trademark enjoys protection for 10 years. After this period, the trademark protection can be renewed for another 10 years at a time.

Regarding Matthias Rößler:

Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.

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