In recent years, trademarks have taken on a more important role in marketing. Not only do they protect a company’s name, but they also provide a platform for business creativity. Trademark law is particularly rigorous when it comes to slogan design. When registering a trademark, it is important to include a slogan to help your mark stand out and promote your product or service. However, some firms have registered slogans with only a promotional formula. Is this a good idea?
Unified software support and services are offered by Rimini Street Inc. (“Rimini Street”), a company situated in Las Vegas. The business is well-known as an independent supplier of support services for business software, including SAP and Oracle licensees. The business was also the subject of a copyright infringement action filed by Oracle in the US, which may interest certain copyright enthusiasts. With the tagline “OTHER COMPANIES DO SOFTWARE, WE DO SUPPORT,” Rimini Street tried to have the EU area designated for consulting, technical support, and software maintenance.
The Board of Appeal dismissed the appeal and upheld the Examiner’s reasoning, concluding that the word sign “OTHER COMPANIES DO SOFTWARE WE DO SUPPORT” would only be an advertising formula containing nothing beyond its obvious advertising meaning that would empower the appropriate audience to easily and immediately remember it as a distinctive mark for the services in question. The corporation requested that the Board’s decision be set aside in a petition to the General Court, but it was similarly denied.
The applicant presented a solitary legal argument, alleging infringement of the Board of Appeal’s evaluation of the distinctiveness of the sign “OTHER COMPANIES DO SOFTWARE WE DO SUPPORT.” The Court clarified the criteria for evaluating the distinctive character of EU trademark applications, stating that a trademark only has a distinctive character if it distinguishes the goods from those of other businesses by identifying the goods or services for which registration is sought as coming from a specific undertaking. As a result, it is necessary to evaluate distinctiveness in connection to both the goods or services for which registration is requested and how the general public perceives the mark. A slogan cannot be registered if it cannot be directly understood by the relevant public as a sign of the commercial origin of the products and services in question, apart from its advertising purpose.
What was the Court’s final judgment?
The corporation asserted that many unanswered questions, including how help would be delivered and what commitments “other companies” are making, will be raised by the contested IR. Eventually, it would convey a message with a hazy meaning that would make the contested international registration memorable and hence distinctive in the minds of the relevant public. The disputed global registration would also benefit from the repeated usage of the verb “do” in that slogan’s grammar.
These arguments were rejected by the Court, which noted, among other things, that the target audience would not pay much attention to a sign whose literal meaning is merely an advertising message of a rather general nature and would not take the time to explore the various possible functions of the group of words or to memorize it as a trade mark.
In addition, the concerned public will view the disputed IR as a whole and not be bothered by its different parts. Furthermore, the use of common English words together in a single sign (such as “DO” or “OTHER COMPANIES”) conveys a message that is obvious and unambiguous, which, in contrast to Rimini Street’s claim, does not necessitate any effort on the part of the average consumer to interpret. The applicant’s proposed interpretations that differ from that view are neither immediately tenable nor obvious to the typical customer.
The fact that the sign is a word mark and doesn’t even contain a nonliteral component that can attract the right consumers prevents Rimini Street from claiming ownership of any particular design or arrangement of its parts. Because of this, the sign in question lacks uniqueness or significance, necessitating at least some interpretation by the pertinent public or eliciting a cognitive process in that public, and is unable to inform clients of the business genesis of the in-question offerings.
What must a trademark slogan consist of in order to be registered?
Three elements are essential when registering a trademark slogan:
- The mark must be distinctive.
- It must be appropriate for the goods and services associated with the mark.
- It must serve the economic interests of the trademark owner.
While there is some leeway in terms of what can be used as a slogan, certain restrictions apply. For example, slogans cannot consist only of promotional formulas or only represent the company’s name. They also can’t be too confusing or misleading.
Registering slogans that consist only of promotional formulas may sound like a great idea, as this will help your mark stand out. However, this is not recommended by the EU. This is because such slogans are not visually or verbally identifiable. As a result, it would be difficult for consumers to understand your brand’s offered services.
Conclusion
The European Union (EU) has strict rules for trademarks, requiring every trademark to contain at least one distinctive element. This means that a trademark must be visually and verbally identifiable and accompanied by an appropriate slogan.
EU trademarks must comply with a certain set of regulations in order to be granted a trademark license. However, some businesses take advantage of this by creating slogans consisting only of promotional formulas – without any substantive information. This effectively serves as an advertising gimmick and can damage your business reputation.
If you want to protect your business name and trademark, ensure all advertising materials contain at least some relevant information. This will help you avoid being labeled as deceptive and misleading. In the internet and social media age, it’s more important than ever to ensure your branding is accurate and honest.
In order to ensure that your trademark slogan meets all of the necessary criteria, have an attorney review your proposed phrase before filing. It’s better to avoid any potential legal issues early in the process.
