27 November 2015

Slogans - An issue of descriptiveness

by Sheetal Vohra Nupur Kumar Tulika Pandey

Getting trademark protection for slogans is often accompanied by one particular hurdle of retaining exclusivity, which results from their descriptive nature. A slogan is generally a combination of common words which describes the goods or services, or glorifies the goods and/or services of the company. Due to its descriptive or laudatory nature, it can be difficult for slogan marks to pass the distinctiveness test or act as a source identifier. Therefore, slogans can be refused registration unless they have acquired secondary meaning through use. Due to extensive advertising, particularly through various modes of electronic and social media which  spreads the information rapidly and widely, marks can acquire distinctiveness way too quickly. Descriptive marks can acquire secondary meaning in a far shorter time than was previously the case when only conventional media was available to disseminate information about goods and services.
The Trade Marks Registry in the Draft Trade Marks Manual, 2009 had given guidelines accompanied by several illustrations in order to explain what kind of slogans may be allowed to be registered.

Factors which are considered by the Registry while mulling over the question of descriptiveness are as follows:

  • Ambiguity: Where there are two or more possible meanings fora sentence/phrase and one of them is descriptive, the registry will generally not allow registration of such trademarks (slogan) e.g. we set hire standards (for car rental service) is likely to be refused.
  • Value/Inspirational/Motivational Statements: Slogans which express values in general (not dependent on class or type of goods/service) or slogans which are motivational and/or inspiration with reference to the good and services being offered under it, are not capable of being registered, for e.g. ‘we care for the planet’ is not likely to be registered on account of expressing values, ‘it’s never too late’ for distance educational services would be motivational and therefore not registrable.
  • Customer service statements: Slogans which are aimed at customer service, customer’s experience are too broad and applicable to most classes and shall therefore cause confusion and are not registrable.
  • Purely Promotional statements: Slogans whose function is purely promotion such as, “celebrate this Diwali with diamonds.”

However, it is worth noting that the abovementioned guidelines are missing from the new draft Manual of Trade Marks, 2015.

Even in the absence of said guidelines, one may rely on judicial pronouncements where it has been noted that if a slogan has acquired secondary character, then it may be allowed to proceed for registration.  In Reebok India Company v Gomzi Active [ see end note 1], the Karnataka High Court held that a person claiming the benefit of distinctive usage must establish that its slogan has developed secondary meaning and goodwill. The court considered whether the slogan “I am what I am” had acquired distinctive character as a result of Gomzi’s use. It accepted Reebok’s contention that, as the slogan was a generic phrase, it had not acquired distinctive character in relation to Gomzi’s goods. In setting aside the temporary injunction issued by the trial court, the High Court observed that there was no evidence to infer a likelihood of confusion among consumers, as the registered trademarks of the two parties were totally different and mere use of the common words ‘I am what I am’ would not mislead consumers.

In Stokely Van Camp Inc v Heinz India Pvt Ltd [see end note 2], the division bench of the High Court of Delhi considered the issue of use of slogan in relation to energy drinks. The plaintiff was using its registered slogan “Rehydrate Replenish Refuel” in conjunction with the trademark GATORADE. The defendant was using the expression “Rehydrates fluids; replenishes vital salts; recharges glucose” in relation to an energy drink launched in the year 2010 called Glucon D Isotonik. The Court held that in the sports and energy drink market, words or expressions which are akin to the plaintiff’s slogan mark are not only common, but perhaps necessary in order to describe the characteristics or attributes of such products. Therefore, notwithstanding the fact that a party has obtained registration, if a registered slogan mark or similar expression is used to describe the characteristics of a product within the meaning of Section 30(2)(a) of the Trademarks Act, the user is not guilty of infringement.

It is clear from foregoing discussion that in order for a slogan to be protected as a registered trademark and enforced, it ought to be non descriptive and in case it is descriptive, it ought to have acquired distinctiveness and should not consist of word and/or phrases common to the trade.

[The authors are Partner & Junior Associate(s), respectively, IPR Practice, Lakshmikumaran & Sridharan, New Delhi]

End Notes:

2007 (34) PTC 164 (Karnataka)


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