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Is It Possible To Register A Trade Mark For A Slogan?

Advertising slogans are everywhere.  They’re on our television screens and on the radio.  They’re on stadiums, buses, billboards and buildings and on our social media feeds.  They’re on products and packaging.  They’re emblazoned on clothing and they pop up on emails and letterheads.  They’re in our faces and if they’re catchy, they’re on our minds.

A slogan can become an extremely powerful marketing tool, playing a key role in building brand recognition and awareness.  Many businesses invest considerable resources developing unique catchphrases that support their brand or product identity and which help them stand out in a crowded competitive space.

But what if an entity wanted exclusive use of that particular phrase?  What if they wanted to leverage their investment and protect their competitive advantage?  Can they apply for their slogan to be trade marked?

The short answer is ‘yes’, but as with all trade mark applications, plenty of criteria have to be fulfilled for an application to be successful.

IP Australia governs all trade mark applications in Australia and just like any type of trade mark there is criteria needs to be met in order for a slogan to be registered as a trade mark. For example:

  • The slogan must be the Applicant’s (attempting to register another person’s slogan can lead to objections due to bad faith filing and ownership issues)
  • It must be distinctive enough to distinguish the particular goods or service from the competition

In Australia, advertising campaigns are allowed to hype up the attributes and benefits of a particular brand or product.  A business can claim to be the ‘best florist in Perth’ or offer ‘the cheapest outdoor pots in Melbourne’ in its advertising campaign, but it wouldn’t get very far with a trade mark application for such a claim.  Just imagine what an unfair advantage a business would have if its laudatory language and exaggerated claims were legally enforceable!

Applications won’t be approved if a slogan is:

  • Generic
  • Descriptive (eg the best Italian restaurant in Sydney)
  • Congratulatory or complimentary
  • Offensive
  • Misleading

It is also not possible to trade mark slogans that use words that could apply to other businesses in relation to similar goods/services to those claimed by the slogan application, such as ‘low prices’, ‘unbeatable value’, ‘favourite’, ‘don’t pay more’ and so on.

As is the case with all applications, a slogan will also only be considered if it is available for registration.

A comprehensive trade mark search will reveal whether the same, or similar, slogan has already been registered for particularly goods or services.  And again, as with all trade marks, they only apply to the goods or services being claimed.  That means that another entity could use the same or a similar trade mark or slogan in where there is no chance of the products/services competing.

Under Australia’s trade mark law, it is also possible for a seemingly non-distinct or descriptive trade mark to be registered if it is deemed to have acquired distinctiveness, or where it is capable that the trade mark will acquire distinctiveness in the future.  In other words, if the entity can prove that the trade mark is capable of distinguishing the relevant goods or services (or will become so through continued use), it may be considered for registration.

It is also possible to trade mark a slogan alongside a ‘main’ brand name or logo and remember, trade mark registration is country-specific.

Should you wish to apply to register a trade mark for a slogan, here are some of our recommendations:

  • Keep the slogan short and punchy
  • Emphasise the uniqueness of your product/brand/service/campaign
  • Aim for quirkiness, a play on words or catchy phrase to create something memorable
  • Ensure it represents your brand or business
  • Do a comprehensive trade mark search
  • Choose the trade mark class/es carefully

MMW Trademark Services has a long history of assisting clients successfully apply for trade mark protection in Australia and overseas.  We understand the nuances of trade mark law and have the experience and expertise to help you protect your competitive advantage.  For more information or specialist advice from our qualified trade mark attorney, please visit https://www.mmwtrademarks.com.au/ or give us a call on 03 8288 1432.

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