“Nike. Just do it,” “Have a break, have a KitKat,” and “Because you’re worth it” are just some of the most instantly recognisable slogans. Registering your slogan as a trademark comes with many factors to consider.

These catchy, memorable phrases are frequently used as part of a brand’s advertising strategy to establish brand identity. As your business grows, you may consider registering your slogan as a trademark, however before you do, it is worth considering the risks involved.

What are the benefits of trademark registration?

A trademark registration gives the owner a monopoly over the mark and the right to enforce the same in the instance of trademark infringement. Without trademark registration, it is harder to prevent a third party from infringing your mark.

Not all marks are capable of registration. Your trademark must not be descriptive of the goods and services that are being offered under your brand and your trademark must not lack distinctive character.

What are the risks of using a slogan?

Risk 1: Getting your slogan to achieve trademark registration

It is notoriously hard for slogans to achieve registration, mainly because slogans are often purely descriptive and incapable of identifying the trade origin of the brand.

Even well-known brands are struggling to get their slogans to achieve registration. Sony failed to get “HEIGHTEN YOUR SENSES” to achieve registration because the UK Intellectual Property Office (UKIPO) felt that the phrase was a non-distinctive sign and consumers would not be able to recognise the trade origin from the mark. John Lewis’ slogan “FOR ALL LIFE’S MOMENTS” failed to achieve registration on the same grounds.

There is a lack of guidance from the UKIPO about the correct level of distinctiveness that a slogan requires. However, one thing is clear – the slogan cannot be purely promotional (“SAY IT WITH CHAMPAGNE”) and it cannot be a common term (“DRINK SOCIALLY RESPONSIBLY”).

Our 3 top tips for improving the chances of your slogan being registered

  • Ensure your slogan is not descriptive and is not a common term.
  • Ensure your slogan has an imaginative or unusual element, whether that be the syntactic or linguistic structures.
  • Ensure your slogan is not purely promotional.

Risk 2: Ensuring your slogan complies with the Advertising Standards Agency (ASA)

Alongside issues with trademark registration, it is important that if your slogan contains a claim (ie. “the best selling product in the UK”), the claim must not fall foul of the ASA guidelines. Your slogan must be factually true and cannot be misleading in any way. The ASA will require you to substantiate the claim you are making with evidence. Vodafone recently had to provide the ASA with evidence to substantiate the use of their phrase “The UK’s only Phone Buy-Back Guarantee.”

The ASA can publish their findings on their website and often do, which could lead to adverse publicity for your brand.

To find out more about how to protect or registering your slogan as a trademark, please get in touch with our specialist Trade Marks team and we would be happy to help.