EUIPO declares Banksy’s ‘Flower Thrower’ trade mark invalid
The famous graffiti artist’s trade mark was cancelled on the grounds that it was filed in bad faith.
The success of a marketing campaign can often depend on the use of a memorable slogan.
However, the more successful the slogan, the more attractive it is to competitors in the market place who might wish to also use the slogan, or a close variation of the slogan, in order to capitalise on the success of the original user of the slogan. For this reason, obtaining trade mark protection for such a slogan is desirable as the unauthorised use of the slogan, or a confusingly similar slogan, by others would amount to infringement of the trade mark.
Obtaining registered protection for a slogan might not be a straightforward process. A trade mark cannot be registered if it lacks distinctive character and both the UK and Community (EU) trade mark offices have precedent for dismissing slogans as mere marketing hyperbole or as being promotional statements in relation to the goods/services being offered, as opposed to perceiving the slogan as clearly indicating the economic origin of the goods/services. This is despite the fact that case law suggests that such reasoning in itself is not sufficient to refuse protection for the slogan. This makes it very difficult for even experienced trade mark advisors to predict whether or not an objection is likely to be raised by the office examining the trade mark application.
There are some things that the owner of the slogan can do to maximise the chances of successfully registering the slogan without too much, if any, objection:
If an objection is raised and maintained by the examining office, there is the option of arguing that the slogan has acquired a distinctive character through use and providing evidence of such use. This is only an option for slogans which have been in significant use for a period of time and is not an option for new slogans. A strategy for a new slogan would be to file for the slogan with a distinctive word or logo to take advantage of the deterrent effect and to use the time to make use of the slogan with a view to supporting an argument of acquired distinctiveness at a suitable later date.
Finally, once registered protection for the slogan has been obtained, it is important to maintain a watch on the market place and to take action against third parties trying to take advantage of the success of the marketing campaign through use of an identical or similar slogan. Whilst there will inevitably be time and expense in proactively policing the use of the slogan, this should pay off by preventing the slogan from being perceived as generic and failing to denote a specific origin for the goods/services being marketed, potentially resulting in the loss of the registered protection. Furthermore, being seen to be actively policing the brand increases the deterrent effect on would be infringers.