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?

You Can Trade Mark A Slogan But…

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…

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.

Comprehensive Trade Mark Search

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.

Our Recommendations

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 Mark My Words Trademark Services or give us a call on 03 8288 1432.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.