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How to register slogans as trade marks

Kerem Gökmen of Dis Patent explains how slogans can be registered as trade marks in Turkey and gives examples of the difficulties that some brand owners have faced

In the advertising world, everyone agrees that a slogan should be simple, catchy, reflect the character of the trade mark and, needless to say, it should also be original.

When discussing countries separately, it is difficult to say that there is a particular level at which slogan trade marks are found to be distinctive. For example, the Office for Harmonization in the Internal Market (OHIM) could be seen as stricter than some national Patent Offices considering some of the refusals for applications that were not very descriptive.

BEKO

According to the Trademark Examination Guideline that was published by Turkish Patent Institute (TPI), a slogan is always registrable as a trade mark if it contains verbal or figurative elements which are distinctive on their own. For example, Bir dünya markası means A World Brand.

However, in order to increase the scope of protection, slogans should be registered without the mark itself since only the combination mark and slogan as a whole will be protected if registered in this way. For example the slogans "Have it your way" and "Impossible is nothing".

Regarding our example ''bir dünya markasi'' of BEKO , since the slogan has not been registered alone but with the trade mark, the TPI has not refuse the trade marks listed in the table and they have now been registered. As seen in Table 1, some of the classes are common even though the owners of dufy and iwo are different.

Table 1: Examples of bir dünya markasi

Mark

Registration number

Class(ES)

iwo1

iwo

bir dünya markasi

2014 59051

2,3,4,8,10,16,21,22,25,35

iwo2

iwo

bir dünya markasi

2015 15264

5,11,28

Dufy Bir Dunya Markasi

2007 17398

3,18,25,35

Dufy Bir Dunya Markasi

2011 112025

35


Table 2: Examples of combination marks

Slogan

Combination

Bir-iyilik-yap-kendine

(Do yourself a favour)

Dogadan
HayatPaylastikcaGuzel

(Life is beautiful as long as it is shared)

TurkcellHayatPaylastikcaGuzel


In addition, filing the two applications with a trade mark and slogan combination and just the slogan itself is also an option. See Table 2 for two examples.

Moreover, creative slogans that use plays on words, irony, rhyme, alliteration or subliminal messaging can be accepted as distinctive.

According to the TPI, a slogan is descriptive if it is limited to general invitations to buy, laudatory statements or seeks to promote superior knowledge, client friendliness, economic success or the availability of the trade mark applicant. Table 3 sets out some examples.

Table 3: Descriptive slogan marks

Slogan

Class

More than machinery

Class 9

Söz verdiğimiz herşey sözleşmede (Everything that we have promised is in the agreement)

Class 35

Aracınız için en iyisi (The best for your car)

Class 12


Table 4: Oppositions to slogan trade marks

Slogan

Ateş Seni Çağırıyor (Fire is calling you). This is the slogan that Burger King has used in the Turkish market for commercials since 2003.

Status

On November 12 2010, a third party, Meyn Dis Ticaret, filed the application for his mark for class 43 – restaurant services – and TPI decided to publish. During publication the distributor of Burger King, Tab Gida, filed an opposition, which the TPI accepted and the mark was cancelled. In contrast, on August 5 2011, Tab Gida filed an application for the slogan with two versions – Ates Seni Cagiriyor and Ates Seni Cagiriyoo and the marks were registered. In 2014, another third party, Serkan Bükrer, filed an application for this slogan for different classes – 16, 25,38,and 41 – and the mark was published. Tab Gida filed an opposition but the TPI did not accept it.

Slogan

Kokusunda davet var (There is invitation in its smell). This is the slogan that Nescafe has used in Turkish commercials for years.

Status 

The same company, Meyn Dis Ticaret, also filed an application in class 30 – coffees – and the mark was published. After Nescafe opposed, the mark was rejected.

Slogan

Aşkımla erir misin? (Will you melt with my love?). This is the slogan that Unilever uses for its Cornetto brand.

Status

Meyn Dis Ticaret again filed an application for the slogan of Cornetto – askimle erir misin – for class 30, which includes ice-creams. Unilever’s opposition was rejected but the mark was cancelled by Board of Appeal, which gives the final decision of the TPI.

Slogan

Evinizin Herşeyi (Everything for your home). This is the slogan that IKEA uses in the Turkish market and for commercials

Status

The Slogan of Ikea has not been registered in Turkey and therefore there are lots of evinizin herseyi slogan applications and registrations. If this slogan is typed into Google, it can be clearly seen that Ikea owns this slogan. However, on May 22 2008 a third party, Evdiz Tekstil filed an application for Egeevdız evınızın herseyı bızde (Egeevdiz, we have everything for your home). The mark was cancelled by an opposition but not one coming from Ikea. On December 11 2014, another party, Sultans Tekstil, filed an application for Evım senınle evınızın herseyı that was published and registered without an opposition being filed. Although Ikea has been using this slogan for a long time, neither application nor opposition has been filed.


Although filing the slogan mark with the distinctive trade mark could help, it is clear that it would decrease the distinctiveness of the slogan. If a slogan is registered with the trade mark, the TPI will not decide to refuse the mark during an ex-officio examination.

On the other hand, some multinational companies' advertising strategy uses the same slogan in different languages and it should be taken into consideration that the translated slogan should not be descriptive and the registrability search should be conducted exactly in order to overcome the possible loss of rights.

The character or the key word that makes a slogan distinctive could also be the element that is infringed by using the tricks in the language of the country where the mark has been filed. Third parties could also file trade mark applications as word and slogan using their registered trade marks and the real owner's slogan in order to reduce the distinctive character of the mark. Companies could overcome this situation by narrowing the scope of the worldwide search of the slogan mark, studying the language in which the application has been filed and coordinating with the licensee for the registration of the slogan that is used in the local market. Table 4 provides some examples of interesting cases.

As can be seen from these examples, if IP matters are handled by the headquarters of the trade mark owner, which is located outside Turkey, it can be difficult to instruct a local IP firm in Turkey to file an application for a slogan trade mark since commercial strategies can be different and there is a risk of problems through miscommunication between the distributor, the IP firm and the headquarters.

Kerem Gökmen

Kerem

 

Kerem has a very wide scope of experience in trade marks, especially in terms of prosecution, assignments, applications, trade mark similarity and availability searches, oppositions and appeals. He graduated from the Business Management Faculty in 2005 with a bachelor's degree and the Department of Audio-Visual Techniques and Media Production for the programme in Brand Communication with an associate degree in 2014. He became a trade mark attorney after graduating from university and has been recognised as an IP STAR in Turkey in 2014 and 2015. He has been working in the intellectual property sector for almost 10 years and is member of INTA, AIPPI and other organisations.


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