Can I Trade Mark a Derivative Slogan?
If you have settled on a business slogan and are attempting to trade mark it, you should consider whether it is registrable, especially if it is a derivative slogan. Using a derivative slogan can lead to unwanted legal consequences. Without taking precautions, you may be infringing on the original slogan if you decide to use a derivative slogan. To avoid this, this article outlines:
- what a derivative slogan is;
- the requirements for receiving a trade mark for a slogan; and
- measures you can take to avoid trade mark infringement.
What Is a Derivative Slogan?
Put simply, a derivative slogan contains elements of an original slogan that is already in existence. This original slogan is referred to as ‘the underlying work’ and is largely what the ‘derivative work’ bases itself on. For example, some common types of derivative works are cinematic adaptations of novels and sampling in music production.
For example, in 1995, the California Milk Processor Board registered their slogan ‘got milk?’ in the USA. The slogan was also registered as a trade mark in Australia in 1996 and has enjoyed protection since its filing date. Since then, the slogan has been an underlying work in many derivative campaigns, running from PETA’s anti-dairy campaign in 2002 to artist David Rosen’s influential work in retaliation to the Iraqi War.
Since derivative slogans contain a substantial part of an underlying work, there is a risk that the trade mark is not registrable or, in the instance that it is registrable, is likely to infringe on the trade mark protecting the underlying work.
Trade Mark Requirements
All trade marks must meet certain criteria to be capable of being registered. Firstly, a trade mark cannot deceive consumers or confuse consumers. This is especially common in slogans that allude to a product achieving some sort of outcome. For example, a slogan that predicts the health benefits of a particular milk beverage without evidence to support the claim would likely deceive consumers.
Secondly, a trade mark cannot be offensive. Whilst there is no strict definition of what constitutes an offensive trade mark, slogans which are profane, racist, blasphemous, or incite violence or criminal activity are generally unacceptable.
Thirdly, a slogan cannot be merely complementary or use ordinary language. For example, the word ‘refreshing’ or ‘great tasting’ concerning a drink are words ordinarily used to describe the products and are merely laudatory in nature. Therefore, the slogan ‘great tasting’ cannot be a trade mark, as it is highly likely that other businesses have a legitimate interest in using these words or phrases in their slogans.
Above all, a slogan must be capable of distinguishing your goods or services from others in the market. If it is too similar to the underlying work, it is unlikely to satisfy this criterion. For example, the California Milk Processor Board successfully acquired a domain name from the band ‘GotMilk’, which had also used the stylised font associated with the California Milk Processor Board’s recognisable slogan. Therefore, the band has since changed their name and logo by virtue of being too similar to the Board’s slogan.
Tips to Avoid Trade Mark Infringement
Suppose you do wish to trade mark a derivative slogan. In that case, you can take the following measures to limit your chances of committing trade mark infringement.
Conduct a Trade Mark Search
Before registering the derivative slogan, you should search the Australian Trade Mark Search for comparable trade marks that other parties have already registered. You should keep in mind that two registered trade marks of comparable nature can sometimes coexist. For example, your business slogan in the hospitality industry in New South Wales may coexist with the slogan of an agricultural-based business in Queensland. To search, you can find the Trade Mark search here.
Use a TM Headstart Application
IP Australia provides you with various ways to register a trade mark. For example, a TM Headstart application can help detect any issues with receiving a trade mark for your derivative slogan. A TM Headstart application involves a specialist assessing your application before filing it with IP Australia. Therefore, you can identify any deficiencies or potential issues with your application promptly. Then, you can fix these problems before formally registering.
A derivative slogan comprises a substantial part of another original slogan. Whilst you can register a trade mark for some derivative slogans, they must satisfy the requirements for a trade mark to be registered. The most significant requirement is that the trade mark must differentiate your goods or services from others in the market. You should conduct a trade mark search or use a TM Headstart application to detect any deficiencies in your application. This will further your chances of IP Australia approving your derivative slogan. If you require further legal assistance with registering a trade mark for your derivative slogan, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
You can use a standard application to apply for a registered trade mark with IP Australia. However, if you use a standard application, you do not receive the specialist pre-assessment that you receive using a TM Headstart application.
The cost for a TM Headstart application starts at $330 whereas the cost for a standard trade mark application starts at $250. The applications have different pricing given the extra services a TM Headstart application provides.