Slogans as protected trademarks

“Emerson’s maker of the better mousetrap if secluded in his house built in the woods would today be unlikely to find a path beaten to his door in the absence of a costly advertising campaign to acquaint the public with the excellence of his wares”—Lord Diplock

Slogans and taglines are considered to be essential parts of a brand’s identity and contributors to a brand’s equity. Apart from creating brand awareness, slogans also promote brand differentiation in the consumer’s mind. In today’s media-saturated environment, in which consumers are viewing and hearing hundreds, if not thousands, of advertisements every day, advertising slogans and taglines are becoming an increasingly important element of a brand’s advertising strategy as they aid in creating a brand’s recognition and recall.

The Oxford English Dictionary defines a slogan as “a short, memorable phrase used in advertising or associated with a political party or group”. It is usually a combination of words that aims to describe the attributes or advantages of the specific product it is used to advertise. Popular slogans/taglines create an immediate and exclusive association with the specific product they are used to advertise.

"Despite slogans/taglines being implicitly covered in the act, there appeared to be a marked reluctance to accept them as valid trademarks by the Indian courts."

For instance, a mention of the slogan ‘Utterly, butterly, delicious’ would immediately make most Indian people think of Amul butter; ‘Because you’re worth it’ reminds us of L’Oréal’s commercials for its cosmetic products; and ‘Just do it’ would certainly bring to mind the Nike brand.

The international position

Although they are sometimes put through more stringent procedures for registration to establish distinctiveness, internationally slogans are increasingly being held to be entitled to trademark protection. For instance, the US Lanham Act expressly protects slogans and Article L. 711-1 of the French IP Code provides for the protection of “combinations of words” as trademarks.

In the case of Unilever v Nestle, the Federal Court of Australia, while recognising slogans as trademarks, inter alia held that: “15. Slogans can be registered as trademarks if they are capable of distinguishing the applicant’s goods from those of other traders”; and “16. The increasing use of slogans in advertising and their use by traders as trademarks as well as the inclusion of shapes, tastes or smells and aspects of packaging in the act, has broadened the ways in which distinctiveness can be acquired.”

A Practice Amendment Notice issued by the UK IP Office (IPO) in 2006 states clearly that slogans may be protected as trademarks provided they are not descriptive of the goods or services but possess the capacity to describe the individual characteristics of the goods/services of one undertaking.

The UK IPO has granted registration to a number of slogans holding them to be fanciful or an uncommon combination of words, etc. For example, the slogan ‘Open pour enjoy life once more’ was granted trademark registration with respect to foodstuff and non-alcoholic beverages on the grounds of being an uncommon combination of words.

The Court of Justice of the EU (CJEU) in the Erpo Mobelwerk GmbH case upheld the decision of the Court of First Appeals allowing the slogan ‘Das prinzip der bequemlichkeit’, which literally translates as ‘The principle of comfort’, to be registered under Classes 12 and 20. The CJEU was in agreement with the Court of First Appeals, which held inter alia that the slogan did not consist “exclusively” of signs and indications that designate the quality of the goods concerned and that it is inappropriate to apply to slogans criteria that are stricter than those applicable to other types of signs.

The position in India

The judicial treatment of slogans/taglines, especially within the realm of IP rights, has had a chequered past, to say the least. Courts have afforded protection to slogans under copyright law; for instance, in the Hindustan Coca-Cola case the Division Bench of the Hon’ble Delhi High Court granted Pepsi an injunction in its favour protecting its slogan ‘Yeh dil maange more’, inter alia holding that Pepsi’s slogan formed the theme of the advertisement and was therefore entitled to copyright protection.

However, in the Godfrey Phillips case the Delhi High Court, while holding that the slogan ‘Swad badi cheez hai’ used by the defendants with respect to identical goods did not infringe Godfrey Phillips’ slogan ‘Shauq badi cheez hai’ in as much as both were held to be phrases commonly used, inter alia further held that slogans, however distinctive they may have become, are essentially a set of words that form part of ordinary everyday language, and cannot be the subject matter of copyright protection as they involve no creativity.

"no hard and fast rule can be laid down with respect to slogans/taglines and their inherent distinctiveness needs to be judged on a case-by-case basis."

Slogans/taglines satisfy the definition of “mark” as well as “trademark” as per the Indian Trade Marks Act, 1999 inasmuch as slogans are “combination of words”; further they are capable of being graphically represented and are capable of distinguishing the goods/services of one person from those of others and are used to indicate a connection in the course of trade between goods/services and some person/proprietor having the right to use the mark.

Despite slogans/taglines being implicitly covered in the act, there appeared to be a marked reluctance to accept them as valid trademarks by the Indian courts.

Indian courts have held antithetically that slogans/taglines are not liable to be protected as trademarks because they are ‘descriptive’ in nature. For instance, in the Marico case, the Hon’ble Delhi High Court was of the view that the plaintiff’s registered trademarks ‘Losorb’ and ‘Lo-sorb’ were not entitled to trademark protection as ‘low absorb’ “is not a coined word and at best it is a combination of two popular English words which are descriptive of the nature of the product”.

In the subsequent judgment passed in the Stokely case, the Delhi High Court, while relying on the Marico case, held that Heinz’s mark ‘Rehydrates fluids, replenishes vital salts and recharges glucose’ used in relation its beverage Glucon-D Isotonik did not infringe Stokely’s mark ‘Rehydrates Replenishes Recharges’ used in relation to its beverage Gatorade. The court further held Stokely’s mark/expression to be descriptive and therefore wrongly registered.

In the case of P&G v Anchor, the Division Bench of the Delhi High Court delivered a landmark judgment recognising slogans/taglines as valid and enforceable trademarks which ought to be protected by the courts in India. This was an appeal which was filed by Procter & Gamble against an injunction order passed by the Single Judge wherein they were injuncted from using the words ‘All Around Protection’ as their slogan in as much as it was held to infringe Anchor’s registered trademark and slogan ‘Allround protection’ in respect of identical products.

The Division Bench inter alia observed: “There is a difference between words/marks which would classify as descriptive, generally of the goods or services, whosoever may be provider thereof, and words/marks which communicate the particular/peculiar quality/qualities or features of product of one and which may not exist or do not exist in the same product being provided by others.

“In our opinion, it is only the former which are not registrable as trademarks and which are not protected, and not the latter. Section 9(1)(b) cannot be read to include words/marks which designate the quality, intended purpose or values, not generic to the goods and services but unique to the goods of one and which may not be present in the same goods and services provided by another. Such words/marks, highlight and communicate to the consumer the difference claimed from the same goods or services of others, also available in the market.

“Of course, such words or marks would also be, in a sense descriptive of those unique features, quality, character, intended purpose of goods/services of one; however they will still classify as distinctive so long as none other until then has described those as unique to the product.”

This case had such an impact on Procter & Gamble that it gave up its US registration for the mark ‘All around’ due to the pendency of the suit and appeal. Procter & Gamble thereafter preferred a Special Leave Petition before the Supreme Court. The Supreme Court vide order dated July 3, 2014 dismissed the Special Leave Petition, thereby upholding the view taken by the Division Bench,

Conclusions

International jurisprudence appears to be largely in favour of affording slogans/taglines trademark protection. In India, slogans/taglines are implicitly covered under the 1999 act as valid and enforceable trademarks. Despite the previous reluctance of the Indian Courts to recognise slogans/taglines as trademarks, the Delhi High Court in the P&G v Anchor case took the considered view that slogans/taglines are not always inherently descriptive and may be liable to trademark protection in as much as slogans/taglines are descriptive not of goods/services in general but only the particular goods/service they are used in relation with.

However, no hard and fast rule can be laid down with respect to slogans/taglines and their inherent distinctiveness needs to be judged on a case-by-case basis, as is the case with all other kinds of trademarks. Whether the courts in India continue to cement the view in the P&G case and give another window for IP owners to protect their rights in a commercially valuable property, viz, taglines and slogans, remains to be seen.

Sudeep Chatterjee is a partner at Singh & Singh Law Firm, LLP. He can be contacted at: sudeep@singhandsingh.com

Jaya Mandelia is an associate at Singh & Singh Law Firm, LLP. She can be contacted at: jaya@singhandsingh.com