Advertising slogans are quite commonly used in marketing and product promotion. Enterprises use it as a media to convey their business philosophy and to promote their image and products.
Concise and vivid as the advertising slogans, they can quickly draw public attention and leave so deep impression that is worth thousands of words. Thus, enterprises favor the advertising slogans well. Over years diligent market promotion and wide advertisement, some advertising slogans have become well-known to the public, such as "Just do it" of Nike, "Impossible is nothing" of Adidas and "Diamonds are forever" of De Beers. They have become the mottos and the second trademarks to the enterprises, and they are no less important than the enterprises' house marks. Hence, all the enterprises are facing the same subject on how to protect and prevent the unlicensed use of the advertising slogans.
Advertising slogans, composed by words in the form of phrases or sentences, formally possess both the characteristics of both literal works and trademarks. Therefore, in principle, they can be the protected by the Copyright Law of PRC (1) ("Copyright Law") and the Trademark Law of PRC(2)("Trademark Law"). This article will discuss the legal protection for advertising slogans from the perspective of the Trademark Law and the Copyright Law and their practice respectively.
I. The Trademark Registration Protection
The Trademark Law provides that
"Any visual signs of words, devices, letters, numerals or any combination of the above elements, which being able to distinguish the goods or service of one entity from the others, can be registered as trademarks."(3)
Accordingly, advertising slogans consisting of words are acceptable for trademark registration applications. As to whether to be granted with registration, just like other common word marks, the slogan trademarks shall go through the official examination on whether they possess due distinctiveness and can function as indicators of the source of the products. In terms of common word marks, neither the trademark law nor its practice requires a word mark to be original or coined in order to achieve distinctiveness. Generally as long as the words used by a trademark are not the generic name of the goods or does not directly indicate the features of the products, they shall be considered as distinctive and capable of distinguishing the origin. Hence, "Apple", "Great Wall" and other dictionary words possess just as much distinctiveness as the coined words "NEC", "TCL". Second, the words used by a trademark need not to be totally unrelated with the features of the products. For instance, "Safeguard" indicates the features of the products in certain way, but as long as the indication is not a direct description in nature, the mark shall not lose its distinctiveness.
However, the examination on the slogan trademarks tends to be more stringent, either in terms of the examination criteria or the practice of trademark authorities. According to the Examination Criteria (4)issued by the Trademark Office, "non-original phrase or sentence that indicate the features of the products or services are lack of distinctiveness as trademark, except for the original and non-popular ones or those combined with other elements thus gaining distinctiveness as a whole". Accordingly, "not to indicate the characteristics of the products" is just the most elementary requirement for the registration of slogan trademarks. In addition, slogan trademarks should be original and non-popular, which obviously set a higher threshold in the judgment of their distinctiveness and thereby greatly increase the difficulty to get them registered.
As to whether a trademark is original, it is not difficult to judge in the case of common word marks. Non-dictionary words can be regarded or alleged as "original", such as "Haier", "Canon" and "Philips". It seems that by composing the words in a non-dictionary or non-traditional way, we can easily achieve "original". While the originality of slogan marks are not so easy to attain. As short sentence consisting of words, the purpose of slogan is to promote the concept, culture and image of the enterprises and their products, which requires it to be expressed in a way familiar and comprehensible to the general public. Hence, the slogan trademarks could not differ far from the language used by people in daily life. There may be some uniqueness in the sentence structuring, but the slogan ultimately cannot avoid being tinted with a sense of popularity. As such, the slogan is intrinsically hard to attain original. Just as hard is how to judge whether it is original or not.
As regards the slogan trademarks, which one is original and non-popular? Which one is more original? It's hard to make a clear distinction. Different people could have different views and feelings, which makes the examination of the Trademark Office also quite subjective and uncertain. The following slogans have once been applied for registration as trademarks, such as "The world swings with me", "Inspiration lights life", "Your vision, Our future", "Listening creates the future", "Sense the world, foresee the future" and "Share the moment, share the life". In practice, the Trademark Office directly approves the registration for "The world swings with me", "Inspiration lights life" and "Your vision, Our future", while rejects the rest of the slogans for lacking of distinctiveness. The Office even makes a total contrary conclusion to the same mark applied for different goods. For example, the Eastman Kodak Company's slogan "Share the moment, Share life" was approved in Class 16 for pictures, but was denied in Class 9 for cameras.
The reason why it is difficult for the slogan to achieve distinctiveness and obtain registration as trademark lies in the nature of itself. Advertising slogan takes the form of short sentences and its function is mainly to promote and convey the information of the company and its products. Trademarks are usually regarded as consisting of coined or dictionary words and aim at indicating the source of the products, instead of conveying information or concept. Hence, advertising slogans are different from trademarks in both form and nature, and are seldom recognized as trademark. That is, advertising slogans are congenitally defected as trademark and hence hardly capable of the trademark function of distinguishing the source. For the above reasons, in practice, except for the small proportion of slogans that have been approved for registration as trademark, major portion of the slogan mark applications were rejected for lack of distinctiveness. Examples of this kind are countless, such as "Listening creates the future", "Sense the world, Foresee the future" and "Share the moment, Share the life" mentioned above. These slogans need to mount a higher threshold of law in order to get registered.
The Article 11 of the Trademark Law provides that signs lack of distinctiveness cannot be registered as trademarks, with the exception that "those that have acquired distinctiveness through use can be registered". This offers the slogan marks possibility of remedying their intrinsic deficiency as trademark. According to this provision, if the slogans have established sole association with certain enterprises in the public recognition through use and are capable of functioning as distinguisher of source, they can be granted with trademark registration. As this exceptional provision further increases the threshold of registration, meanwhile it has opened a new path for the registration of slogan trademarks. Having met the requirements of this provision by proving the acquired distinctiveness through use, the slogans mentioned above, i.e. "Listening creates the future" of KENWOOD, "Sense the world, foresee the future" of OMRON and "Share the moment, Share the life" of Kodak, which were preliminarily rejected by the Trademark Office, have eventually all get registered.
II. Copyright and Anti-unfair Competition Protection over Advertising Slogans
The term "works" used and protected under the Copyright Law refers to original intellectual creations in the literary, artistic and scientific domain, in so far as they are capable of being reproduced in a certain tangible form. (5)As to literal works, it refers to the works manifested in text form, no matter how long it is or what type or format of literature it uses. As long as it is original, it should be within the scope of protection by the Copyright Law. Therefore, it can be concluded that advertising slogan is in principle not excluded from copyright protection on condition that it is original. However, the Copyright Law does not define what is "original". Judging by the judicial practice, the expression of the original works may not necessarily be unprecedented, and re-creation based on the previous intellectual works of others are not forbidden either. In general, the works shall possess originality as long as it is created by the author independently rather than plagiarizing others' works and bears some personalized characteristics.
In the judicial practice, there are some instances in which advertising slogans are granted copyright protection. For example, in the case of Cheng Du Huangchenglaoma restaurant vs. Beijing Huangronglaoma hotpot restaurant, the court holds that the slogans used by the plaintiff possess originality which are qualified as literal works and thus should be protected under the copyright law. Accordingly, the defendant infringes on the copyrights of the plaintiff in using the same slogans during its daily business. As to how to judge the originality of the advertising slogans , the court specifically made the following analyses and statement on the verdict, " 'original' mentioned in the copyright law means that the works is created by the author independently without plagiarism or imitation, which is mainly manifested in the selection, design and composition of certain materials. Although the vocabulary which comprise the slogans are not original, through the plaintiff's selection, combination and arrangement, they have reflected certain personalized characters. Hence, the slogans possess the character of original. " This case and the court opinion should have certain referential value on how to seek copyright protection for the advertising slogans.
Moreover, if the advertising slogan has become a symbol or identifier of the company through long-term use and promotion, hence closely associated with the goodwill and the products of the company, it may also seek protection under the Anti-unfair Competition Law against other party's unauthorized use.
III. Conclusion
In the fierce market competition, the enterprises tend to promote their culture and products by adopting unique advertising slogans. The advertising slogans could become a symbolic sign of the company and thereby attain an intangible value just like trademarks. Under the existing legislation and its practice, advertising slogans could become the protected object of the Trademark Law through trademark registration, as long as it is original and could function as source indicators. Meanwhile, the slogans that have built sole connection with certain enterprises in the course of business should also fall within the protection scope of the Anti-Unfair Competition Law. In addition, original advertising slogans may also become the protected objects under the Copyright Law. Yet trademark registration will be the best way of protection among the above, in terms of either its effectiveness or infinity.