Whose Line Is It Anyway? Protectability Of Slogan Marks In India

Author: Dishti Titus

Introduction

Brands constantly innovate to adopt multiple and unique ways to identify themselves with their offerings with the objective of creating a lasting impression in the minds of consumers. This includes adopting various features such as logos, product names, shapes, colours and even slogans.

The Cambridge online dictionary defines a slogan as ‘a short easily remembered phrase, especially one used to advertise an idea or a product’. A slogan may also be used to describe the character of an idea or product. Some popular slogans which have been adopted by brands over the years include –

• Nike – “Just Do it”
• Apple – “Think Different”
• L’Oreal – “Because you’re worth it”
• KFC – “It’s finger lickin’ good”
• Coca-Cola – “Open Happiness”
• Dunkin’ Donuts – “America runs on Dunkin’”
• McDonald’s – “I’m lovin’ it”

The Division Bench of the Delhi High Court in the case of Procter & Gamble Manufacturing (Tianjin) Co. Ltd. and Ors. vs. Anchor Health & Beauty Care Pvt. Ltd., 2014(59)PTC 421(Del), has highlighted the following as regards protectability of slogans:

“…

(vii)…slogans or taglines … in advertisements, grab attention and are sometimes better known than the branded products themselves; such slogans/taglines/expressions are marketing and communication tools par excellence and directly impact the consumers by encouraging them to chose (sic) certain goods or services over others; such slogans/taglines/expressions, though may not directly designate particular goods or service but support it in commercial terms by enabling the public to link the slogan/tagline/expression to a specific company or to recall a brand—they are the first line of communication with the consumer;

(viii) The function of a slogan/tagline/expression is to crisply communicate the ability or nature of the goods or services; the same communicate to the consumers the qualities thereof; often it is found that it is such slogan/tagline/expression which lingers in the minds of the consumers and which remains as an after taste of an advertising campaign…

(ix) Slogans/expressions/taglines have indeed become an important tool in the branding and advertisement campaigns, specially in the visual media;

(x) An effective slogan/tagline/expression is memorable and impactful and make the customers feel good about what they are purchasing and foster more efficient purchasing decisions by creating distinction in consumers’ minds;

…

(xii) Slogans/taglines/expressions though can be descriptive but are not necessarily descriptive; it cannot however be lost sight of that the slogan/tagline, if descriptive, does not serve the purpose for which it is coined and does not justify the high cost incurred in conceiving and popularizing the same. A distinctive as compared to descriptive slogan, conveys the company’s and the product’s essence as well as what it aspires to be and conveys the commercial expression to the consumers. It promotes memory recall;

…”

Slogans and creation of Intellectual Property

As per the Trade Marks Act, 1999, a trade mark includes any device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof that is capable of being represented graphically as well as capable of distinguishing the goods or services of one person from those of others. On the other hand, copyright subsists in original literary, dramatic, musical and artistic works, cinematographic films and sound recordings.

It is natural that when businesses adopt various features such logos, product names, shapes, colours, etc., there is creation of intellectual property. Owing to the investment of time, labour and money by a business towards creation of its intellectual property, the business would seek protection in respect thereof so as to prevent others from reaping benefits of the same. Likewise, businesses tend to allocate and invest a lot of funds for promotion of their brands and products by way of slogans. Such investment is not only limited to the creation of the slogans, but also towards promotion thereof so as to create an association with the brand and products. Given the nature of slogans and the investment that goes into the same, one pertinent question arises – are slogans or tag lines capable of protection under the intellectual property regime?

Judicial Trends Encompassing Protection of Slogans as Intellectual Property

The protectability of slogans under statutes governing trademark and copyright as well as under common law has been deliberated upon by different courts in India.

In Pepsi Co. Inc. and Anrv. Hindustan Coca Cola and Ors., 2003(27)PTC 305(Del), the question before the High Court of Delhi was whether the slogan “Yeh Dil Maange More” is subject to copyright protection. The Court held that advertising slogans are prima facie not protectable under copyright law and may instead be protected under the law of passing-off.

In the case of Reebok India Company v Gomzi Active, 2007(34)PTC 164(Karn), the Karnataka High Court considered whether the slogan “I Am What I Am” had acquired distinctive character owing to use by Gomzi Active. The Court stated that “It has to be established by the person claiming the benefit of distinctive usage that over a period of time the slogan has developed a secondary meaning and a goodwill.” and held that “the trade slogan “I AM WHAT I AM” being more in the nature of a generic phrase has not been shown to have acquired any distinctive character vis-a-vis the goods produced by the plaintiff.”

In Stokely Van Camp Inc. v Heinz India Private Limited, 2010(44)PTC 381(Del), the Division Bench of the High Court of Delhi, dealt with the question of infringement of the registered mark ‘Rehydrate Replenish Refuel’ in relation to energy drinks by the Defendant’s use of the slogan ‘Rehydrates fluids; replenishes vital salts; recharges glucose’. The Court observed “…both products are isotonic drinks. The trade liberally uses such like words or expression in one or the other form. The defendant’s use of the expression does not prima facie appear to be dishonest for the reason that these are words or expressions used commonly to describe what appears to be the functional utility of an isotonic drink.” and held “notwithstanding the fact that there is a registration in favour of the plaintiffs if, the expression which is registered or an expression similar to the one which is registered is used to describe the character of the product then, within the meaning of Section 30(2)(a) of the T.M. Act, 1999, the user will not be guilty of infringement.”

In the case of Godfrey Phillips India Ltd. vs Dharampal Satyapal Ltd. & Anr., 2012(51)PTC 251(Del), the High Court of Delhi, in response to the question – whether the slogans and/or phrases are copyrightable or not, held that “the slogan “Shauq Badi Cheez Hai”, being combination of common words, would not fall within the scope of “Artistic/literary work” under the Act. Slogan “Shauq Badi Cheez Hai” does not appear to be an outcome of great skill, inasmuch as, it uses the short stereo type combination of words. In fact, both the slogans, that is, “Shauq Badi Cheez Hai” as well as “Swad Badi Cheez Hai” are commonly spoken in Hindi language in day to day life. That apart, the slogans, in my view, are not copyrightable.”

Conclusion

Slogan marks find protection and remedies (for breach of rights) under both statutory and common law viz. through infringement and passing off actions. However, in order to claim such protection for rights in slogans (and enforcement thereof), the slogan(s) must satisfy some criteria laid down by the judiciary to qualify for protection in the first place.

Often slogans comprise of a combination of words that are commonly used in relevant trade channels and are devoid of distinctive character. Such slogans are construed as lacking any originality and therefore are generally not considered to be literary works. Accordingly, they do not qualify for protection under copyright law in India.

As for obtaining protection of a slogan under law of trademarks, a slogan is capable of falling within the definition of a mark as specified in the Trade Marks Act, 1999. For a slogan to qualify for trademark protection, it is subject to the same scrutiny as a non-slogan mark. Accordingly, one would need to show that the slogan mark is either inherently distinctive or has acquired distinctiveness as of on the date of application of the mark for registration.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.