By Hatice Ekici Taga and Gokhan Gokce 

Slogans are commonly used by companies in marketing and promotion activities to draw public attention to goods and services.  Through widely promoted commercials, certain slogans have become well-known: “Just do it”, “Because I’m worth it”, “The world’s local bank”, “Impossible is nothing”.  In some cases, the fame of slogans can exceed brands’ own reputations.

Although slogans can be protected under copyright and unfair competition law, companies are always looking to expand their legal protection, and obtaining trademark registrations is often the most efficient way to protect a slogan.  Enforcing a trademark registration brings particular advantages, such as ease in burden of proof.  However, companies face difficulties, as trademark offices have a tendency to refuse a request for trademark registration of a slogan on the ground that slogans lack distinctiveness.

To be eligible for trademark registration, marks are required to have distinctive character. A trademark is considered non-distinctive if it is used to identify the source of goods and services or if it is informational or generic and thus not useful to distinguish the goods and services from those of other undertakings. With respect to slogan trademarks, it is hard to clearly identify which ones are in fact distinctive. Therefore, authorities may have different approaches to this question; because there is a certain level of subjectivity, their decisions may appear to be inconsistent.

It is fair to state that the Office for Harmonization in the Internal Market (OHIM) has been strict in assessing the distinctiveness of slogans, while the Turkish Patent Institute (TPI) displays a relatively more positive approach.  OHIM considers a slogan to be distinctive if it may be perceived immediately as an indication of the commercial origin of the goods or services in question.  The slogan should enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin.  For example, OHIM refused to register “Your excellent smile” on the ground that the slogan is made up of a combination of three common English words and it is ordinary with a simple and direct complimentary message.

TPI’s approach in Turkey is not as strict as OHIM’s.  Although TPI has similar registration criteria, it does not take into consideration the originality of the slogan or the indirect relation between the slogan and the goods or services.  From the perspective of TPI, in order to be registered as a trademark a slogan should create the perception of a brand in the mind of the consumer.  Further, the slogan should not already be commonly used in the relevant sector.  TPI recently refused to register the Turkish translation equivalents of the following slogans: “Middle of the month, half of the price”; “Our customers come first in line”.  However, TPI decided that the following slogans are distinctive: “Are we so much so good?”, “Which one is your dark chocolate?”, “Your light your glow”.  Additionally, including the brand in the slogan appears to increase the chance of registration, i.e. “Saying Arçelik means innovation”, “Don’t look for any other than Aroma”.

As discussed above, Trademark registration is the most efficient way to protect slogans, although acquired distinctiveness is usually required to obtain such registrations.