Can I protect a slogan as a trademark?

17 October, 2022
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Intellectual property
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Roger Quero


On 1 September, the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) issued a decision (case R 664/2022-1 “Take Five”), which has provided new elements of debate as to whether a slogan can be protected as a trademark. But before analyzing the case and finding out what the EUIPO’s criteria are with regard to this issue, let us introduce some preliminary notes.

According to the definition of the Royal Academy Dictionary, a slogan is a “short and original formula used for advertising, political propaganda, etc.”. In particular, a slogan is a message generally of a laudatory or informative nature, which is used in advertising with the intention of being striking and easy for the consumer to remember, usually to present products, services or companies. Given its nature as an advertising message, we question whether a slogan can be considered a trademark.

On its own account, and following a more than reiterated and established case law, a trademark is a distinctive, word, graphic, mixed or three-dimensional sign, whose function is to identify the business origin of a product or service as opposed to other competing products or services in the market.

Returning to the case at hand, the American company Studio Beverage Group, Inc. applied for registration of the word mark “TAKE FIVE” in the European Union to identify mineral, flavored, carbonated and non-alcoholic beverages in class 32. That application for registration was refused by the examiner on the ground that the combination of the English words “take” and “five” would be perceived by the public as a “laudatory promotional slogan, the function of which is to incite the consumer to buy five units of the beverage in question. Thus, as such a sign would not enable the target public to identify the entrepreneurial origin of the beverages or create a link in the consumer between that product and its manufacturer, it cannot be registered as a trade mark.

Studio Beverage appealed the decision, arguing that “TAKE FIVE” had distinctive character in relation to the designated beverages, as it would be a play on words meaning “take a 5-minute break”, which is widely understood in English-speaking markets, and which triggers a relevant cognitive process in the mind of the consumer concerning the concept of relaxation. Being therefore an unusual term, the appellant defended its suitability to designate beverages on the market.

The Board of Appeal of EUIPO accepted the examiner’s argument and dismissed the appeal on the ground that the term was devoid of any distinctive character, because whereas a trade mark must enable the consumer to distinguish the designated beverages from competing products without paying particular attention or carrying out an analytical or comparative examination, the name ‘TAKE FIVE’ would not allow him to do so. The Board does not deny that a slogan, an indication of quality or an express inducement may have distinctive character; however, its suitability as a trade mark must be based on the fact that the public can easily memorize such a combination of words to identify a good or a service, as well as its business origin. This is more complex for this type of sign, because in the EUIPO’s opinion, if the slogan is limited to providing purely abstract and purely emotional information to the consumer, the latter will not take the time to mentally perceive it as a trade mark.

Turning to the analysis of the term “TAKE FIVE”, the Board emphasizes that its distinctiveness must be assessed in relation to the English-speaking public in the European Union, which also has a low level of attention because it is a promotional indication. It goes on to state that the term lacks originality, as it does not display any unusual or striking feature; and that it conveys a clear message without any effort of interpretation: that the consumer should not buy one unit of the product, but five.

In this line, according to the Board, the expression suggests an invitation to purchase a drink in a quantity of five, or a variety of five types of drink or flavourings which can be purchased in a five-pack. In short, ‘TAKE FIVE’ is an advertising message, which conveys factual information, an appeal to potential customers to buy drinks, but which is not, however, suitable to indicate the business origin of the goods designated.

On the other hand, the Board presumes the lack of distinctive character of a slogan if the relevant combination of words, considered on its own or in conjunction with the descriptive indications of the goods, merely expresses general laudatory and/or advertising statements. If the content of the slogan merely indicates to the consumer characteristics of the goods or services relating to their market value, and is not perceived by the average consumer as an indication of their business origin, such a combination of words will not be sufficiently distinctive to be protected as a trade mark.

Considering the “TAKE FIVE” decision, we return to the question of whether a slogan, as a laudatory, informative message about a product or service, can be protected as a trademark. The fact is that the Spanish offices and courts have tended to show less restrictive criteria than the EUIPO and, likewise, the European office has recognised trademark registration subject to compliance with certain guidelines.

The difficulty in registering a slogan lies in the fact that the public does not have the same perception for these signs as for other types of trademarks, as the average consumer is not used to making assumptions about the business origin of the goods or services on the market from promotional or advertising messages, and also their level of attention tends to be low in this type of message.

According to the EUIPO guidelines, in order for a slogan to be registered as a trademark, some of the following factors, among others that can be proved, may be taken into account: (a) the expression has several meanings; (b) it constitutes a play on words; (c) it introduces elements of conceptual intrigue or surprise, such that it may be perceived as imaginative, surprising or unexpected by the public; (d) it has some particular originality or resonance; (e) it triggers in the mind of the public a cognitive process or requires interpretative effort; and/or (f) it displays unusual syntactical structures and/or linguistic and stylistic devices such as alliteration, metaphor or rhyme.

These factors need to be taken into account, both for registering trade marks in the European Union and before national offices. In the first place, and given the complexities of registration, it is necessary to assess whether the sign to be registered is indeed a laudatory message, which fits the definition of slogan, or whether we can actually move away from this interpretation, and justify that the term is not intended to send a message, but to identify a product or service in the market.

Secondly, and taking the EUIPO’s criteria, if the term is allegedly a slogan, it is necessary to analyse legally on a case-by-case basis to prove that the cognitive process triggered in the consumer exists. In this work of analysis and advice, we the lawyers, just do it.

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