The question how to trademark a slogan and whether it is possible is asked by many businesses and brand owners. Slogans can indeed be registered as trademarks, under certain conditions. In this article, a trademark attorney will explain how to apply for registration of a slogan as a trademark. He will further explain the examination process of the application and the different criteria that are examined.
The law firm of Decker & Ofir is an Israeli boutique law firm, with branches in Tel Aviv and Jerusalem. The firm specializes in intellectual property (IP) and trademark law. Our attorneys have extensive experience in providing legal services to Israeli and international clients in various matters. Our services include handling and processing trademark registration applications in Israel and worldwide, portfolio management and representation in trademark legal proceedings.
Slogans, Brands and Reputation
Behind every successful business stands its reputation. Reputation represents much more than the name of the brand. In present times, brands are becoming more and more significant in our lives. We already know that consumers expect to get a positive experience, based on their familiarity with them.
It is important to keep in mind that brands are in fact assets. Thus, businesses invest effort in strengthening and increasing the value of the business’s reputation (marketing, promotion, etc.), the legal activity of protecting the brand is important nonetheless. Registering a trademark will allow you to promote your brand freely, knowing that infringement of it by others could justify taking legal actions against the infringers.
The same applies for slogans that are a part of your brand. Registering a slogan as a trademark is in fact possible in many cases. It will allow you to use the registered slogan exclusively in order to promote your brand. Below we will discuss how to trademark a slogan and what are the law’s requirements in order to do so.
The Legal Definition of a Trademark
Trademark protection is not granted to only brands or logos of a business. The definition of a mark in the Israeli law is very broad: “letters, numerals, words, devices or other signs or the combinations thereof, whether two-dimensional or three-dimensionals.” This broad definition can include slogans, among other things.
However, a slogan would not gain trademark protection automatically. It must be registered as a trademark in order to be recognized as such. Although a limited legal protection might be granted to unregistered marks, based on the civil tort of “passing off” from the Israeli Commercial Torts Law, this protection requires meeting several criteria. slogans won’t always gain this protection. Therefore, the ultimate way to ensure their protection is to register them as trademarks.
How to apply for Registering Your Slogan as a Trademark?
We note that trademark protection is territorial, not global. In order to obtain trademark protection within a certain country or territory, the slogan should be registered there. Our firm provides services of handling applications for trademark registration in Israel and in various countries around the world.
Israeli trademark registration requires the filing of an application to the Israeli Patents, Designs and Trademark Office. The application process became more efficient and “user-friendly” over the years. Nowadays, it can be done online. After filing the application for registering a slogan as a trademark, a lengthy process of examination takes place. Various factors are reviewed in order to conclude weather the slogan can qualify for trademark registration.
Despite the fact that it is possible to file the application independently, it is more appropriate an attorney specializing in trademark law would handle it. Applying without being familiar with the law might cause the loss of the legal protection which could have been given to the slogan. A lawyer specializing in trademark law will know how to help you avoid such an unwanted consequence.
The Examination Process of Applications for Registering Slogans as Trademarks
After filing an application for registering your slogan as a trademark, the application will be examined by the Trademark Office. The procedure includes a verification that the slogan meets the criteria of the law and can thus be registered as a trademark. Among these criteria, it is examined whether the slogan is not identical nor may cause a deception to another already-registered trademark.
It is therefore important to conduct a search, in order to ensure that your slogan is not deceptive. Trademark search can be made for that purpose in the Israeli registry and registries of other countries and organizations. The search needs to be as comprehensive as possible. It should not be limited only to identical marks, but also to marks with significant similarity.
How Much it Costs to Register a Slogan as a Trademark?
While applying for a trademark registration, the costs mainly depend on the number of goods for which the slogan is designed for. In Israel, like most parts of the world, there is a classification of goods and services, based on the Nice Agreement. The classification is divided into numbers, between 1 to 45. Each type of goods belongs to another class, and one must specify the class (or classes) of goods or services for which the slogan is applied to be registered as a trademark.
As of the year 2020, the registration fee for registering the first class of goods or services as a trademark in Israel is 1630 ILS (approx. 480 USD). For each additional class, there is an additional fee of 1224 ILS (approx. 360 USD). There might be more fees, based on events that are taking place during the examination process.
There are two main examination tracks of a trademark application – a regular track and an accelerated track. The latter requires a special fee of 751 ILS (approx. 220 USD). It also requires filing a petition in which the reasons of urgency will be specified. If the petition will be approved, the examination will be moved to the top of the queue.
What are the Boundaries of Registering a Slogan as a Trademark?
As mentioned above, there are different criteria that should be met in order to recognize the slogan as qualified to be registered as a trademark. One main requirement in this regard is that the slogan is not identical or may cause deception with another registered trademark. A slogan may be refused for registration in Israel not only because of similarity to another trademark, but also for geographical indications and appellations of origin.
For instance, in 2015, the Israeli district court in Tel Aviv ruled that a popular Israeli mineral water company called Mey Eden will no longer be able to use its slogan “the nature’s Champagne.” The Israeli company was sued by the French corporation Comite Interprofessionnel, which organizes the actors producing and trading Champagne. The court accepted the French corporation’s claims and stated that Mey Eden’s slogan infringes its registered appellation of origin.
Another case where refusal to register a slogan might take place occurs when the slogan is merely intended to describe the quality of the product or service behind it. In numerous cases it was held that such slogans might not qualify for trademark registration, unless they acquire a distinctive character. That is, the slogan is widely familiar among consumers, who associate it with the product or service behind it.
Slogans and Distinctive Charcter
Another precedent verdict was with regards to the slogan “Free your skin”. It was held that the mark cannot qualify for trademark registration. The slogan was applied for registration by an international company of razors and shaving products. The Israeli Trademark Registrar refused to register the mark. The reason was that the slogan was found to be self praising and lack any distinctive character.
In order to conclude whether a slogan acquired a distinctive character and can therefore be registered as a trademark, the following factors should be taken into account: the content of the message, the way it is presented, the message’s length, how catchy it is, its language, what is the type of audience and what is the essence of the product. Other factors may be considered as well, and the decision is based on examining the factors as a whole.
For How Long the Slogan is to be Valid as a Trademark?
The period of validity of an Israeli trademark is 10 years. After this period, the owner of the slogan can apply for its extension. In principle, trademarks can be extended for an unlimited number of times. However, there is a renewal fee for each extension. Furthermore, in some cases the Trademark Registrar is authorized to decide not to renew a trademark. A common case of refusal for renewal occurs when there is no use of the mark for a long period of time.
In this article we explained how to trademark a slogan. We further explained what is the procedure behind the application for registration and about the registration fees. For more information on trademark registration of slogans, you may contact our firm. Our attorneys will be happy to assist you with information and legal consultancy. The law firm of Decker & Ofir specializes in trademark law and provides all the needed legal services for handling applications for trademark registration.