Registrability of slogans as trade marks

Slogans objectionable under Sections 3(1)(b) and (c) of the Act

1. The first question to be answered in assessing the registrability of a slogan is whether it consists exclusively of a sign which may serve, in trade, to designate characteristics of the goods and services, including “intended purpose”. Slogans that fall within this exclusion will be refused under Section 3(1)(c).

    

2. In assessing the likelihood of other traders using the sign in trade as a description of the goods and services, use in advertising should be taken into account (see the Appointed Person’s comments in the “Day by Day” decision).
3. Slogans which include the applicant’s trade mark will not consist exclusively of a sign which may be used in trade to designate characteristics of the goods and services. Consequently, marks such as “VOLVO FOR LIFE” (Class 12) will be accepted as distinctive in the prima facie.
4. Many slogans describe the quality or intended purpose of the goods/services. For example:NEVER CLEAN YOUR SHOWER AGAIN (Class 3): objection is intended purpose
   AN EYE FOR DETAIL (Class 25): objection is quality
   THE WORLD’S BEST WAY TO PAY (Class 36): objection is quality
   WHAT YOU NEVER THOUGHT POSSIBLE (Classes 9 and 38): objection is quality
   BEAUTY ISN’T ABOUT LOOKING YOUNG, BUT LOOKING GOOD (Class 3): OBJECTION IS intended purpose.Slogans objectionable under Section 3(1)(b) of the Act

    

5. In many cases, a slogan that is not caught by Section 3(1)(c) will not be subject to an objection under Section 3(1)(b). However, where the slogan describes a means of conducting business, it may be open to objection under Section 3(1)(b) even though there is no Section 3(1)(c) objection. This is because such statements will not be taken as a trade mark by the average consumer and are therefore devoid of any distinctive character. For example:HAGGLE FREE BUYING (Class 12) or the slogan may be a combination of descriptions of means of conducting business and characteristics of the goods, for example, HAGGLE FREE BUYING, WORRY FREE OWNERSHIP (Class 12): where the first part describes a business style and the second part also describes the quality of the goods. Such applications will be refused under Section 3(1)(b). 

6. Where the slogan is fanciful, imaginative (or just impenetrable) in respect of the goods/services at issue, it may be accepted. For example:FROM THOUGHT TO FINISH (Classes 9, 16, 35, 41 and 42) (imaginative).

   “Trade Marks Journal”