If you have created a marketing or advertising campaign, then you have likely developed one or more unique logos, images or phrases that communicate the essence of your business’s brand. You can typically register these individual elements of your campaign as trade marks, but registering a campaign slogan can be tricky. To register your campaign slogan, you will need to make sure that it meets the criteria set out in the Trade Marks Act 1995 (Cth) (the Act). For example, you will need to ensure that another party has not already registered your slogan as a trade mark. This article will explore these criteria in more detail.
Does Your Slogan Meet the Criteria Set out in the Trade Marks Act?
Under the Act, IP Australia has the right to reject your application if your slogan is either:
- misleading (e.g. a slogan that claims whisky can help you lose 5 kilos a week);
- descriptive or commonly used; or
- merely laudatory (i.e. complimentary).
IP Australia typically rejects campaign slogans that fall foul of the above criteria because they would be contrary to fair competition in the marketplace. Imagine a business having the exclusive rights to use a slogan declaring, ‘the best ice cream in Sydney!’. Puffery or obvious exaggeration is allowed in advertising under Australian Consumer Law, but to allow a brand to register such a trade mark officially would give them an unfair advantage over other businesses. The business could enforce its rights against other ice creameries and stop them using a laudatory phrase as an advertising pitch to sell their product.
What Kind of Slogan Can I Register?
Businesses can register a combination of words (e.g. a campaign slogan) as a trade mark. It must, however, be capable of distinguishing the applicant’s goods and services. IP Australia can reject an application if the mark is generic, descriptive or lacking in its distinctive character.
To give some examples, you might recognise these famous slogans, which appear on the trade mark register:
- McDonald’s ‘I’m lovin’ it’;
- Nike’s ‘Just do it’; and
- L’Oréal’s ‘Because you’re worth it.’
Has your Slogan Already Been Registered as a Trade Mark?
As with any other trade mark application, you should conduct thorough searches before making your submission. Some of the common searches you should carry out include:
- Australian Trade Mark’s Online Search System;
- trade mark classifications picklist;
- trade mark image viewer; and
- Google searches.
This process can be difficult because you will need to search not only for identical slogans but for any registered trade marks that bear significant similarities to your own.
If you intend to register a slogan as a trade mark, you must ensure that it satisfies the legal requirements and does not infringe anyone else’s registered rights. Your slogan must meet the distinctiveness requirement set out in the Act and distinguish your goods and services. Conduct thorough searches using the search tools available online, or find a trade marks lawyer to assist you. If you jump ahead, you may invest a lot of time, effort and money developing your campaign only to discover your slogan infringes another person’s registered intellectual property rights.
If you have any questions or need any assistance registering your campaign slogan as a trade mark, get in touch with our trade mark lawyers on 1300 544 755.
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