Protecting Your Brand Slogans From Misuse

Slogans, sometimes referred to as taglines, are branding phrases that are short and catchy. These phrases are intended to cut through the clutter of advertising and draw the attention of consumers to the brand’s goods or services. Although there are no explicit references of slogans in the current legislation, they have recognition in Canada as source identifiers and are subject to certain restrictions.

Obstacle to registration of a slogan

The registration of slogans faces obstacles if the slogan is not descriptive enough or if the slogan is being deceptively misdescriptive about a character or quality associated with the goods or services. Generally, slogans serve the purpose of drawing attention to the advantages or attributes to the goods associated and objections to the descriptiveness during the examination are common. As of current standing, Canada does not give any inherent distinctiveness of a mark, apart from its descriptiveness.

Additional obstacles

As per the new legislation, additional obstacles might be faced during registration of your slogan. As per the legislation, applicants will have to furnish the Trademarks Office with evidence to establish the distinctiveness of the mark as of the application’s filing date.

Circumstances that will require you to present such evidence include:

  • The office’s preliminary view of the trademark not being inherently distinctive;
  • The mark is made up of a single colour exclusively or a combination of colours without precise contours; or
  • If the mark is exclusively or primarily made up of one or more of the three-dimensional shape of any of the goods which has been specified in the application or is an integral part or the packaging of any of those goods, a mode of packaging goods, a sound, a scent, a taste, a texture or any other prescribed sign.

Keeping the marks descriptive

If the marks are not having inherent distinctiveness then they might not be registrable under the new legislation, unless evidence, on the contrary, is filed. As per the legislation, slogans may also end up falling into this category by their sheer virtue of being descriptive of the goods or services, but failing to reach the ‘clearly descriptive’ threshold. Also, the slogan might be descriptive but might fail to be sufficiently descriptive of an intrinsic characteristic or quality regarding the goods or services, as is required to reach that threshold. In such cases, slogans will have to be used before they are registered so that evidence of acquired distinctiveness can be presented to the Trademarks Office.

Without a question, slogans and fluid marks are increasingly gaining importance as tools that help brands stand out in a crowded marketplace. Some careful consideration needs to be given to assess the potential risks involved with the adoption and protection of slogans and fluid marks. Especially, when major changes are being expected in Canada’s trademark law and practice.