In the Trademarks Act, it is stated that a trade mark can consist of, for example, "words and combinations of words, under this slogan and name". In principle, there is nothing to prevent slogans, expressions and sayings from being registered as trademarks, as long as they have a distinctive character and are not descriptive. The slogan or saying must be assessed against the goods and services stated in the application.
Descriptive tagline
Slogans that describe goods and services or that say something about quality and properties cannot be registered as trademarks. A slogan or multi-word brand that, for example, only boasts about the quality of your product or your professionalism, will normally not be able to be registered.
You will therefore not get exclusive rights to trademarks such as:
- THE BEST ICE CREAM IN TOWN for ice cream
- FAST, SIMPLE and CHEAP for a moving agency or transport service
- HAN WITHOUT SUGAR for mineral water and juice
Slogans that lack distinctiveness
In order to be able to register a slogan as a trademark, it must have the ability to stick in the consciousness of the relevant customer group. The slogan must be understood as a characteristic that says something about the origin of the product or service. In other words, it must have the ability to differentiate your goods and services from others. We will therefore not normally accept sales-promoting terms as trademarks.
Slogans that lack distinctiveness:
- SUBSTANCE FOR SUCCESS (Refused in the EU)
- DREAM IT, DO IT (Refused in the EU)
- SHARING EXPERTISE (Refused in the Complaints Board for Industrial Courts, KFIR)
Registrable slogans
A slogan will generally be registrable if it contains an element that "bears the mark", that is to say at least one element that the ordinary consumer (average consumer) can attach to and think about.
Therefore, these trademarks are registrable:
- CARLSBERG – PROBABLY THE BEST BEER IN THE WORLD (CARLSBERG begs the brand and adds character)
- TODAY TOMORROW TOYOTA (TOYOTA asks for the brand and adds distinctiveness)
A slogan will often be registrable if it contains an imaginative or catchy element such as puns, rhythm or irony.
Judgment on such trademarks:
- THE BIG PICTURE for projectors (has a funny double meaning)
- TILES AND LOVE! for, among other things, ceramic tiles (plays on the phrase "peace and love")
Well-known expressions and sayings as trademarks
Well-known expressions and sayings can be registered as trademarks as long as they have a distinctive character and are not descriptive.
Some words and expressions are so common that they do not have the ability to stick in the minds of consumers as a brand.
Some examples:
- The Norwegian Industrial Property Office (NIPO) has refused applications for common expressions such as THANK YOU and GOOD LUCK. If you see GOOD LUCK on a chocolate or a packet of biscuits, this will be perceived as a pleasant greeting, and not as a sign of where the product comes from.
- In the EU, the usual expression SAFETY 1st refused is registered for, among other things, car seats and prams. This is an advertising expression which at the same time says something about the properties of the product.
- PURE FLOUR IN THE BAG (reg. no. 249774) is registered for, among other things, "bakery". But for the product "flour", perhaps the trademark would be descriptive of the quality of the flour, so that the mark could not be registered.
- GUTANE PÅ TUR (reg. no. 197933) is registered for, among other things, rucksacks, clothing and sporting activities.
- DRA DIT PEPARN GRO can be registered with a tour operator
- IN THE DARK ALL CATS ARE GRAY could perhaps be used for reflectors or a traffic campaign.
- DU SKAL HØYRE MYKJE is the name of a well-known Norwegian TV series. The program title is not trademarked by NRK, but can be protected through incorporation.
- What about YOU SHOULD NEVER SAY NEVER for insurance services, or A KRONE SAVED IS A KRONE LIT for banking?
The question is whether the text will be suitable for distinguishing one company's services from those of others. If the expression is only perceived as a positively charged slogan or an encouragement to buy the services, the trademark will be refused registration.
First come, first served
Some may be upset that it is first come, first served to get the protection of word combinations that everyone needs to use. You must bear in mind that the person who has obtained a trademark right to a saying or expression cannot generally prevent others from saying or writing the expression. The owner can only refuse others to use the expression in commercial activities, and only for the goods and services to which he or she has exclusive rights, and close debts of goods and services. In other words, everyone is free to use well-known expressions and sayings in everyday life, in literary works, in teaching and lectures, etc.
