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Every year we wait with anticipation for the new John Lewis advert and the famous Coca Cola trucks to finally deliver the message that the holidays are coming! To the consumer seasonal adverts mean that businesses will be soon introducing new seasonal products and advertising campaigns for various brands.
For a business wishing to ensure that it is able to utilise the full attractive force of its new campaign it will be important to explore the legal side of some elements used some of which may need to be protected before the launch.
TV and Internet adverts are usually accompanied by jingles which go with the overall mood and concept of the season, and well-known Christmas songs or just their titles are often used for promotional purposes. For instance, ‘It’s the Most Wonderful Time of the Year’ was used in a cranberry-flavoured Sprite commercial in 2017 where the strapline was creatively changed to ‘It’s the Thirstiest Time of the Year’.
It is important, however, to first establish whether it would be legally safe to pursue the idea of using or referring to a famous musical piece. When music, songs or straplines are used in a commercial context to promote a product, intellectual property ownership issues may arise. Therefore, owner’s consent may have to be sought prior to the use and royalties may have to be paid. Unlike other forms of intellectual property copyright arises automatically and does not require formal registration. Copyright protects its owners against copying of the whole or a substantial part of a work.
Case law suggests that a simple song title used as a strapline is probably not enough to constitute copyright infringement. In the case of Francis Day and Hunter v 20th Century [1940] AC 112 it was found that the use of the song title ‘The Man Who Broke the Bank at Monte Carlo’ in a film was not infringing since the title alone was not ‘substantial enough’ to qualify for protection. However, the more recent standard applied in court suggests that provided the text of a strapline is ‘the author’s own intellectual creation’ (Infopaq, C-5/08,) it may still be covered by copyright. This criterion may apply even when the original title is used on its own without the music.
In addition, a slogan can be registered as a trade mark. This is the strongest way to protect it. A trade mark registration provides its owner with a monopoly right which can be enforced against the use of an identical or a confusingly similar slogan without consent. Slogans are not excluded from registration but are not always accepted as they are rarely understood by consumers to indicate the commercial origin of the goods.
At the same time slogans may still be registrable so long as they are sufficiently fanciful and easy to remember. In practice, this appears to be quite a difficult proposition to prove. A mere laudatory or promotional phrase would unlikely be granted legal protection. Nevertheless, the fact that the slogan is a promotional message does not in itself mean that it will be refused, but it is essential for a slogan to be distinctive (Audi AG, C-398/08).
When it comes to a slogan used in the course of trade for a long time, it is possible to rely on its acquired distinctiveness as long as robust evidence of the mark’s use is submitted. For such a claim to be successful the evidence should clearly demonstrate that the applicant has used the slogan in relation to the goods and services specified in the application for registration.
Furthermore, in a trade mark dispute with Mars UK Ltd, Nestlé successfully demonstrated that ‘Have a break’ is a widely known slogan that has acquired its own distinctive character through its use together with the main brand in the phrase ‘Have a break … Have a KitKat.’ (C-353/03). This case confirms that it is not necessary to use a slogan independently in order to be considered a distinctive trade mark – its distinctiveness may be acquired through the use as a component of a larger phrase or together with another recognisable brand like KitKat.
If a strapline is not creative enough to be registered on its own and acquired distinctiveness cannot yet be established, it can still be used in conjunction with the main brand or on its own if there is no conflict with any earlier rights. The latter risk can only be accurately assessed on the basis of comprehensive trade mark searches. Although such searches can often be quite costly and time-consuming, it is always sensible to seek professional advice and conduct the appropriate level of research before introducing and investing in a new seasonal slogan. Detecting a potential issue at an early stage can help to avoid an injunction, liability for damages, or even criminal penalties.
Ultimately, each seasonal slogan needs to be looked at considering its own individual characteristics, including its nature and meaning, how it might differ from the phrase by which it has been inspired, how extensively it has been used and in relation to which goods or services.
It is vital to take all of the preliminary steps in order to ensure that the slogan is safe to use and/or to identify if legal protection is available when it’s beginning to look a lot like a trade mark!
If you’d like to discuss protecting a trade mark, or any other Trade Mark matter you can contact the writer, or a member of our Trade mark Team.
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