The advertising slogans are short sentences intended to attract and retain the attention of the consumer, fruits of treasures of imagination and objects of all the attentions, have a relatively undetermined status in law.
Slogans can be protected in three ways: under copyright law (1), under trademark law (2) and finally under unfair competition law (3) according to the specific requirements of each protection.
eUnder copyright law
To benefit from copyright protection, the slogan must be original, that is to say that it bears the imprint of its author‘s personality, which can be difficult to establish, especially if the terms used are commonplace or banal.
In a decision rendered by the Paris Court of Justice, the judges considered that the originality of a slogan ” can only result from a certain ingenuity of its formulation, by the addition of unexpected terms, likely to characterize a particular creative effort reflecting the personality of its author. ” (TGI, Paris, ch. 3, section 1, October 17, 2019 n°19/04392).
For example, the following slogans were deemed original:
- ” Un nom pour un oui”, for wedding dresses, because of the name/non word game (CA Paris, Pôle 5, ch. 2, June 17, 2011, n°10/12092) ;
- ” Et l’eau devient soin” and ” Et l’eau se fait soin”. The opposing party did not demonstrate how these two expressions were used in everyday language (TGI Paris, ch. 3, section 2, May 30, 2003);
On the other hand, the judges did not consider the following slogans as original:
- ” La réussite est en vous” because of the description of a common idea not characterizing a particular bias, imbued with the personality of the author of such a nature as to demonstrate a creative effort (TGI, Paris, ch. 3, section 1, October 17, 2019 n°19/04392) ;
- ” Quoi de plus naturel”, because the slogan is a simple repetition of an expression in everyday language that has no original character and does not bear the imprint of its author’s personality (CA Paris, ch. 4 section A, May 18, 2005, GAZ PAL, 151-152, May 31-June 1, 2006, p. 27-30, note by Jean-Jacques Biolay; PIBD 2005, 814, IIIM-511)
If your slogan is banal, you will have to opt for a protection by the trademark law.
Under trademark law
The registration of the slogan as a trademark has the advantage of giving it an anteriority at a certain date and of granting a monopoly during 10 years renewable.
For example, the following advertising slogans have been registered as trademarks:
- « L’Oréal parce que je le vaux bien »,
- « Buvez – éliminez »,
- « Petit mais costaud».
However, it is not because the advertising slogan is registered as a trademark that it necessarily has protection. Indeed, the requirements are numerous because the sign must be available of course, but also distinctive in relation to the designated goods or services.
On the other hand, the trademark will incur the nullity if the slogan is perceived as a mere advertising message, ideological or otherwise, or as a mere ornamental decoration, i.e. if it does not fulfill its function which is to guarantee the origin of the product or service in question.
- For example, the following trademarks have not been recognized as distinctive: ” I LOVE MY T’s ” registered by the company Zara to designate clothing, because of the massive use of expressions with the attack sequence ” I LOVE ” used for advertising purposes and on the other hand, the slogan constitutes a laudatory formula aimed solely at promoting the products it designates and not as indicating the origin of the products (CA Paris, Pôle 5, chamber 1, November 30, 2011 n°09/25107);
- ” Happy Life“, to designate erotic products, because the target audience perceives it only as a laudatory promotional message and not to identify the products at issue (EUAT, Sept. 25, 2018, No. T-457/17, Medisana AG v. EUIPO) ;
- ” Moins de migraine pour vivre mieux”, application for registration of a European Union trademark to designate products related to migraine. It was not considered distinctive because it would be perceived as an advertising message and not as an indication of the origin of the goods in question (TUE July 8, 2020 n°T-696/19. Teva Pharmaceutical Industries Ltd v/ EUIPO).
On the other hand, the distinctiveness of the following trademarks was admitted by the judges:
- ” Quoi de plus nature ?”Although not protected by copyright, this slogan was deemed to be distinctive of the products it designates, in this case dairy products, since the slogan evokes the healthy nature of the products, presented in an interrogative form, and that it therefore does not describe the quality of the designated products, but invites the consumer to ask himself about ” their purity ” (CA Paris,4th chamber section A, 18 May 2005, GAZ PAL, 151-152, 31 May-1 June 2006, p. 27-30, note by Jean-Jacques Biolay; PIBD 2005, 814, IIIM-511) ,
- ” it’s like milk but made for humans“: application for registration to designate dairy products (EU Court, Jan. 20, 2021, No. T- 253/20, Oatly AB v. EUIPO). The trademark is distinctive when the slogan allows to trigger ” a cognitive process ” in the concerned public and allows to individualize the products referred to in the application.
Thus, an advertising slogan can benefit from trademark protection as long as its function is not limited to promoting the products that the trademark designates, but also identifies the origin of the products for which it has been registered.
For unfair and parasitic competition
Slogans have an economic value that can be protected through a action for unfair competition (which punishes actions contrary to fair trade practices, in particular when a risk of confusion is created with a competitor’s product) and parasitic (which punishes placing oneself in the wake of an economic operator, without untied purse, by taking undue advantage of his notoriety or his investments).
Several cases have sanctioned the unfair and parasitic imitation of slogans.
Thus, the Paris Court of Appeal considered that the use of the expression “DESSINE MOI” followed by nouns such as “a song” or “a fireplace” constituted an act of parasitism and that C&A company had thus sought to take undue advantage of the notoriety attached to the literary work “The Little Prince”, for which the expression “DESSINE MOI UN MOUTON” is notorious (Paris Court of Appeal, 4th chamber, section a, 2 April 2003).
In a case between Cora and Auchan, the Court of Cassation qualified as an act of parasitism the fact that Auchan used the slogan ” prix mini sur gros volume ” and “gros volumes à prix mini “which is very close to the slogan used for 25 years by the Cora company ” gros volumes = petits prix “. The Court of Cassation considered that the slogan of the Cora company is distinctive because it is very well known by the general public and that this formula is ” lapidary and striking “. The Court adds that it is also because of the investments and efforts made by the Cora company through multiple advertising operations that the parasitism was retained (Cass., Com., June 9, 2015 n°14-11.242).
On the other hand, the Court of Cassation has ruled that the slogan ” Chaque jour, cinq fruits et légumes à moins de 1 euros chacun – Moins de 1 euro le kilo ou la pièce tout l’été “It therefore did not consider the fact that Casino had used a similar slogan as an act of parasitism. The slogan was considered trite because of the use of the same concept by the Ministry of Health of a nutrition policy and its descriptive and usual character. In addition, CSF did not demonstrate that it had deployed any investments in the development of its advertising campaign (Cass., Com., July 9, 2013 n°12-23.389).
It is also necessary to establish the originality of the slogan within the framework of an action for unfair competition and/or parasite. Indeed, the banality of a slogan holds in failure the action in unfair and parasitic competition. This is how the Court of Appeal refused to characterize the unfair and parasitic competition in a dispute between the company DU PAREIL AU MEME and the company ORCHESTRA PREMAMAN. For the Court of Appeal, the SLOGAN “C’est bien fait pour les enfants” is in no way imitated by the slogan “Bien fait pour nous”, both present characteristics of a great banality relating to childcare products (CA Aix-en-Provence, ch. 3-1, May 2, 2019, n° 16/14291).
This argument was also taken up by the Commercial Court, which considered that the use of the slogan “Where and when to go” does not constitute an imitation of the slogan “When to go”. For the Commercial Court, what is qualified as a slogan is in reality only an extremely banal formula allowing the expression of a very basic question of any person considering going on vacation, and that under these conditions there can be no fault constituting acts of unfair competition (T. com. Paris, 15th ch., March 11, 2019).
Thus, a slogan that would be banal and would not have been the object of numerous investments or that would not be sufficiently known by consumers, could not benefit from protection in case of an action for parasitism and/or unfair competition.
To conclude, before using a slogan, it is advisable to carry out a thorough anteriority search (similarity of trademarks, company names, previous domain names ), in order to avoid being held liable for counterfeiting or unfair competition.
