Slogans as trademarks - European and french practice

• Author: Franck Soutoul - Jean-Philippe Bresson
• Pages: 16-19

“Parce que vous le valez bien”

™ (Because you’re

worth it), “Just do it”™, “

Le contrat de confiance

”™

(the contract of trust)… These slogans grab at-

tention and are sometimes better known than

the branded products themselves. Slogans are a

marketing and communication tool

par excel-

lence

and directly impact consumers by encour-

aging them to choose certain goods or services

over others.

But legally speaking, slogans are at the intersec-

tion of several converging intellectual property

(IP) rights and the source of many headaches.

What is the best way to protect a slogan? How

can a slogan be registered as a trademark? If

registered as a trademark, how is similarity with

another slogan determined? How is a slogan

combined with a verbal mark perceived in

terms of comparing signs? What precautions

need to be taken for slogans created by adver-

tising agencies?

As slogans are tools for gaining market share, in-

volving creative, financial and commercial invest-

ment, choosing the most appropriate method of

protection is key. Trademark and copyright pro-

tection can make a slogan an IP asset, and legisla-

tion against unfair competition may be used as a

defensive approach. However, each of these

means of protection involves a certain risk.

Protection as

a trademark

A slogan is a separate category of sign, and is dif-

ferent from the standard trademark. Slogans can,

in principle, be protected under trademark law,

although they are not explicitly listed among the

signs likely to constitute a trademark. However,

Article L. 711-1 of the French Intellectual Property

Code provides for “combinations of words,” and

Article 4 of Regulation No. 207/2009 on the

Community trademark refers to “words” in a

broader sense. Slogans must conform to the

same requirements as any other trademark and,

in particular, should not be generic in nature or

describe the goods or services themselves, and

must have their own distinctive character.

The European Union’s Office for Harmonization in

the Internal Market (OHIM) has been much

stricter in assessing the distinctiveness of slogans

than the French trademark office and courts.

Community case law indicates that a more strin-

gent procedure is used to determine slogan dis-

tinctiveness than that used for conventional ver-

APRIL 2010

16

SLOGANS AS

TRADEMARKS –

European and French Practice

Businesses, constantly searching for unique ways to identify their goods and services from that of the

competition, are registering ever more creative trademarks – from a specific color, shape, sound, moving

image, taste or smell to slogan marks. This article, by returning contributors Franck Soutoul and Jean-

Philippe Bresson, of INLEX IP Expertise, and reporters for IP TALK, France, highlights some of the difficul-

ties of registering slogan trademarks in Europe and France.

L’Oréal, parce que je le vaux bien

The famous l’Oréal slogan “Because you’re worth it,” registered at the USPTO in 1976, has evolved with the company’s cus-

tomers over the years.

“Parce que je le vaux bien”

and its English translation “Because I’m worth it” became popular in the late

1990s. In 2004, l’Oréal advertising started targeting the ever-growing cosmetics market for men with “Because you’re worth

it too.” Then in 2009, their advertising started using “Because we’re worth it” and for kids “Because we’re worth it too.” The

shift to “we” followed a psychology-based study of l’Oréal’s consumer base. "We" apparently creates stronger consumer in-

volvement in l’Oréal’s philosophy and lifestyle and provides more perceived consumer satisfaction with l’Oréal products.

As l’Oréal celebrated its 100th anniversary in 2009, it continued to re-create itself, making ever stronger trademarks. A simple

Madrid system database search yields 1,892 international trademark registrations for l’Oréal. The company also seeks to re-

main at the cutting edge of the cosmetics and beauty industry through research and development. It is reportedly the top

nanotechnology patent-holder in the U.S.