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A Swift way to comprehensive trademark protection?

Mar 5, 2015

Over the past month there have been almost as many news stories about Taylor Swift’s trade mark strategy as she (or at least her trade mark lawyers) have filed trade mark applications.

Taylor Swift is not alone in the celebrity world in taking an aggressive approach to the accumulation and protection of her intellectual property and, in particular, in maximising her trade mark registrations.  For example, Marshawn Lynch of the Seattle Seahawks has also recently sought a trademark in the US for the phrase “I’m just here so I don’t get fined” (reported here).

However, what is interesting about both Swift and Lynch’s trademark applications is what they are for, and in the case of Swift, how numerous they are.

Lynch’s trade mark application is for a sentence that he said.  It might be described as a “slogan”.  Swift’s trade mark applications are for phrases.  As mentioned in Rolling Stone the applications include the phrases:

  • “THIS SICK BEAT”;
  • “NICE TO MEET YOU, WHERE YOU BEEN?”;
  • “PARTY LIKE IT’S 1989”.
     

These are all snippets of lyrics from her current album.  The applications cover a wide variety of goods, many, like tote bags and backpacks might be expected as part of her merchandising, others, including walking sticks and Christmas tree ornaments are perhaps a little more surprising.  These applications are for trademarks in the USA (see for example, the coverage on the BBC here).  Although trade mark law is similar in the US and the UK it is not identical and the success, or otherwise, of Taylor Swift’s trade mark applications there cannot be relied on if you are thinking about applying for a slogan trade mark in the UK.
 

Slogan trade marks in the United Kingdom: ®egistrable?

A slogan is a key brand asset.  As a result, companies are increasingly asking about applying for trade marks for their slogans or taglines.  However, the Intellectual Property Office, which is responsible for the registration of trade marks in the United Kingdom and OHIM, which is the body overseeing the register of European Community trade marks have been reluctant to allow trade mark registrations for slogans.

A recent case at the EU General Court, Blackrock Inc v OHIM, Case T-59/14, demonstrated how hard it can be to register a slogan in the EU.

The EU General Court confirmed a decision of the Community trade mark offices (OHIM)’s boards of appeal.  It confirmed that “INVESTING FOR A NEW WORLD” was not capable of registration as a trademark.  To be registerable as a trade mark a name, logo or slogan must have “distinctive character”.  The EU General Court considered that this phrase did not have, or was “devoid of distinctive character”.  This was important because, in the view of the EU General Court, the relevant public viewing the statement would not perceive the phrase as being indicative of the company whose services were being marketed under the slogan.

The UK Intellectual Property Office has guidance on applying for trade marks for slogans in its practice manual (available on its website). This guidance confirms that slogans are in theory capable of being registered as trade marks, however, the practical reality may be that it is difficult for them to be accepted because, to quote another case,

…average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans

(paragraph 35, Das Prinzip Der Bequemlichkeit’ C-64/02 P).
 

The prospects for Ms Swift or others wishing to register slogans as trade marks?

If the slogan in question is descriptive of the goods or services that you offer then it will be very difficult to successfully register your slogan as a trade mark.  However there are successful examples, such as Audi’s VORSPRING DURCH TECHNIK, which became more than descriptive through its long term use and widespread customer recognition and as a result was permitted registration as a trade mark.

As to whether any of Taylor Swift’s applications will proceed to registration we wait to see.  Indeed, since her current applications are in the USA, we will also have to wait to see if she (or other celebrities) will start similar trade mark registration campaigns in the UK.

In the meantime, if you have a slogan that you are thinking about registering as a trade mark, get in touch.  Our intellectual property team specialise in trade marks and would be happy to discuss your potential application and how we can help.