We’re joined by Stuart Green who’s a Senior Associate in the Intellectual Property and Technology Group at Dibbs Barker and he joins us from Sydney.  Stuart a warm welcome to BRR.

Thanks very much Kate.

Now Stuart in the United Kingdom we’ve seen a trade mark dispute break out over a World War II slogan which says “Keep calm and carry on”.  Is it common to see such slogans trade marked?

Look Kate it’s not as uncommon as you might think for a business to seek and actually achieve trade mark protection for a slogan.  As your listeners would be aware, a trade mark registration provides its owner with a monopoly to use that trade mark in relation to specific goods or services and a slogan can be an extremely powerful marketing tool to communicate or impart what a business or brand actually stands for.  And the dispute you’ve mentioned is somewhat of an interesting one because it involves, as you said a World War II slogan, which was something that was originally designed by the British Minister of Information in 1939 to boost morale in the event of a German invasion.  And obviously the controversy in this instance seems to have been sparked because first of all the company that was able to achieve registration of this European community trade mark, has affectively appropriated and commercially exploited a slogan that is viewed by many Brits as part of common British heritage.  And secondly prior to registration it seems that the “Keep calm and carry on” slogan was used in a decorative manner on a wide range of goods by a number of different parties who aren’t related to the current trade mark holder.  Now given that the slogan has been used by a number of unrelated parties, you do have to wonder whether the “Keep calm and carry on” slogan could ever perform the function of a trade mark in the UK, that being to indicate the trade origin, in this case a product.  So you’re effectively left with a situation where the British public wouldn’t readily associate the slogan “Keep calm and carry on” with any one business, or recognise it as an indication of origin for any of the goods in the trade mark registration.  But it’s interesting to note that this same company has in fact applied for “Keep calm and carry on” in Australia and at last count that application had been accepted by IP Australia.

And Stuart you did mention that trade marking slogans is not as uncommon as we might think.  But is it difficult for businesses to register a slogan that may be synonymous with their brand?  And can you think of any success stories?

Like any other sign had been protected as a trade mark, in order to obtain registration a slogan obviously needs to meet the basic registerability requirements.  This means that a trade mark needs to be firstly capable of distinguishing specific goods or services, it can’t be merely descriptive, and it needs to be something that is not legitimately required in the ordinary course of trade by other traders.  And if a slogan is synonymous with the business’ brand it’s likely to mean that the business has been fairly diligent in educating its market to associate that slogan with specific goods or services, and this is usually through some sort of directed advertising campaign.  But more often than not you’ll find that the slogan is used in conjunction with the company’s main or house brand or trade mark, and while the main brand is likely to be unique and distinctive, the use of a slogan usually says something about the brand, and it’s likely to be something more descriptive to provide some sort of explanation as to what your brand stands for.  Now if you think of some success stories, you know when you think of slogans Nike’s “Just Do It” comes to mind, or Kentucky Fried Chicken’s or rather KFC’s “It’s Finger Licking Good”, even though they’re trying to move towards “So Good” and then of course Apple Computers “Think Different” which was quite effective in differentiating Apple from IBM when they first came into the market.  Obviously at the other end of the spectrum commonly used directly descriptive generic or laudatory phrases are unlikely to be able to be protected through trade mark registration.  Because they’re likely to be legitimately acquired by other traders to describe their own goods or services.

And Stuart I’d just like to focus on the process for a moment.  Is it easier to get something registered if there’s something else distinctive such as a particular colour or mark which is associated with the slogan or words?

Including as you said some sort of other distinctive element, be that a word, an image or colour, in a descriptive and non-distinctive trade mark, and applying for that combination of elements, may assist in achieving registration but it’s worth remembering what you’re actually trying to achieve here.  Registration for the sake of registration may appeal to some, but at Dibbs Barker we’d advise our client to think carefully about how they actually intend to use the trade mark.  You know the addition of distinctive elements may make it that much easier to achieve registration of that combination of elements, but may make it more difficult to take infringement action against third parties using the slogan, but without that distinctive element or in conjunction with their own house brand.  And I guess the point to remember is that by adding something else distinctive you are effectively limiting the scope of any resulting registration and in many cases the resulting registration will be too narrow to be useful in enforcing your rights.

Okay.  Well keeping that in mind Stuart what’s your top tip for registering a trade mark?

Well Kate aside from seeking advice from an experienced trade mark lawyer or registered trade mark attorney the listeners should keep a few things in mind when coming up with their brand.  Look you know you could – if you can’t come up with something unique and distinctive at the outset there are various strategies involving evidence of use that could be employed to educate the market as we said before to associate a trade mark with specific goods or services.  If successful you know the slogan would develop a secondary meaning as a badge of origin for those goods or services.  But in conceiving a brand it generally makes much more sense to come up with something that’s original and it distinguishes your goods or services from your competitors as obviously this will help you stand out from the crowd.  But if you wanted to put the top tips in well mention three of them in a nutshell, you know, your trade mark should be different and that’s different from existing trade marks, it should be distinctive, in relation to the particular goods or services to be sold or provided under the trade mark, and it needs to be something that would not be required by other traders.

Well Stuart some top tips for business there.  Thank you so much for joining us today.

Pleasure, thanks Kate.

That was Stuart Green; he’s a Senior Associate in Intellectual Property and Technology Group at Dibbs Barker.  And now listeners if you have any questions for Stuart you can either send them in using the panel that appears on your screen, or via email to brr@brr.com.au.