Lexicon > Slogan

IP Lexicon

Slogan

A slogan is a set of words, a formula, sometimes a concise sentence, which aims to have a striking impact on the public.

It is often one of the elements that the consumer will remember in an advertising campaign.

The objective is to transmit a strong idea or message to gather, often with a promotional objective.

The slogan is therefore an essential element of a company’s marketing strategy, which often deserves to be protected.

Among the most well-known slogans (worldwide), which are real vectors of profitability and reputation for the companies that use them, we can mention :

  • L’Oréal’s slogan “BECAUSE YOU ARE WELL VALUED”;
  • The Carglass slogan “CARGLASS REPAYS, CARGLASS REPLACES”;
  • Nike’s slogan “JUST DO IT”.

The more catchy the slogan, the more likely it is to grab consumers’ attention and distinguish a company’s products and values from its competitors in the marketplace.

Thus, slogans with a certain reputation are the target of counterfeiters who want to try to appropriate your brand image.

Under French law, slogans may be protected by intellectual property rights, including

  • By the copyright, provided that they meet the condition of originality imposed by the jurisprudence;
  • By trademark law, provided that they meet the condition of distinctiveness imposed by the law.

Copyright protection of slogans

Copyright protection does not require any formalities.

On the other hand, only original slogans in the sense of the jurisprudence, i.e. slogans that bear the imprint of their author‘s personality, are protectable.

The Courts therefore make a case-by-case assessment of the slogans that are invoked on the basis of copyright, in order to determine whether they are likely to be protected on this basis (and therefore to be the basis for an infringement action) or not.

The Paris Judicial Court has thus had occasion to recall that ” for a slogan, originality can only result from a certain ingenuity of its formulation, by the addition of unexpected terms, such as to characterize a particular creative effort reflecting the personality of its author ” (Paris Court of Justice, October 17, 2019, n°19-04.392).

The following slogans were thus considered original and protectable by copyright:

  • CONTRARY TO THE ANTIDEPRESSOR, THE LOVER COSTS NOTHING TO THE SECU (Paris Judicial Court, February 9, 2017, No. 15-08.503);
  • A NAME FOR A YES (Paris Court of Appeal, June 17, 2011, n°10-12.092).

Conversely, the following slogans have recently been deemed not copyrightable:

  • SUCCESS IS IN YOU, because of its simple and direct formulation and the pre-existence of the exploitation of the expression ” is in you” on the market and, in particular, earlier trademarks containing slogans such as Nature is in you ” or “Nature is in you “. the beauty is in you ” before the date of creation claimed for the slogan ” success is in you “. (Paris Judicial Court, October 17, 2019, No. 19-04.392);
  • WINNING COMBINATION, since the combinationof the terms ” combination” and ” winning ” is frequent and cannot characterize the existence of a choice expressing a personality. Especially since the idea of ” good combination ” came from the advertiser (Court of Appeal of Versailles, October 27, 2020, No. 19-00.840);
  • LE PERMIS LIBRE, given that this expression is not an original oxymoron and that many other economic actors exploit it in the same field (Tribunal judiciaire de Paris, July 7, 2016, n°15-05.127).

These slogans were considered to relate to banal ideas and not to a creation emanating from the author’s personality.

The protection of slogans by trademark law

Beyond the fact that a sign must be available to be valid, it must also and especially be distinctive.

A sign without distinctive character is, for example, a sign that describes the nature, characteristics or purpose of the product(s) and service( s) designated by the registration.

This is called a descriptive sign.

A sign may also be considered non-distinctive if it is purely laudatory.

Thus, the distinctiveness of slogans can sometimes be difficult to demonstrate which can have three types of consequences:

  • Trademark offices are likely to refuse registration on the basis of lack of distinctiveness;
  • After registration as a trademark, a third party may seek to invalidate it for lack of distinctiveness;
  • Even if registered, and even if not contested by a third party, a trademark made up of a weakly distinctive slogan will only benefit from a very limited enforceability against third parties.

For example, the slogans “L’OREAL PARCE JE LE VAUX BIEN”, “BUVEZ – ELIMINEZ”, “PETIT MAIS COSTAUD” could be registered as trademarks, but the slogans “DO LESS TO DO BETTER”, “EMBRASSE LE NATUREL” or “YOUR WELLNESS, OUR FOCUS” were refused registration.

The enforceability of a slogan in the context of an action for unfair competition and parasitism

When slogans are not protectable or protected by any intellectual property right, they can be used against third parties in unfair competition actions provided that they demonstrate:

  • That they constitute a real economic value for the company;
  • That there is a risk of confusion in the mind of the public, when the action is based on unfair competition;
  • That by choosing an identical or similar slogan, the defendant has positioned itself in your wake and sought to benefit from your notoriety and/or your investments.

For example, it may happen that a competitor takes your slogan and simply translates it into English.

According to the facts of this case, this simple translation is not sufficient to avoid the risk of confusion for the consumer who could be led to believe that the disputed slogan constitutes a variation of the prior slogan and that the The product(s) and service(s) in question come from one and the same company, or at least from economically linked companies.

Similarly, a competitor could be tempted to use your slogan and commercial identifiers in an advertisement in order to capture your customers.

A slogan can therefore be claimed, alone, in the context of an action for unfair competition, but also in combination with other elements (logo, sign, poaching, similar communication campaigns, etc.) which could participate, together, in demonstrating the existence of unfair or parasitic behavior.

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