India—Protectability of Slogan Marks
Our Associate, Sandeep Gupta discusses “India—Protectability of Slogan Marks”
A slogan is a repetitive, short, instantly appealing and memorable group of words that people will identify with goods and services instantly. Its variants are former headlines, taglines (also called straplines in U.K) and brand jingles. Brand owners generally use slogans as part of their marketing strategy to draw attention to one or more aspects of their product and services. Continuous use of catchy and memorable slogans often creates a unique brand identity which lasts in consumers’ minds. Many a time consumers can identify the source of a product or service with a slogan even in the absence of a brand name. Such an association may play a major role in business’ success, so it is important to protect slogans!
Slogans are competent to be trade marks under the Trade Marks Act, 1999 (“Act”). As per the Act, a trade mark includes a combination of words, brand, heading, device or any combination thereof capable of being represented graphically and capable of being a source identifier. So slogans are covered by this inclusive definition.
The draft Trade Marks Manual released by the Trade Marks Registry in the year 2015 is instructive insofar as registrability of slogans is concerned. It states the following:
1. One or more words constituted as a slogan mark may be registrable provided it is distinctive per se or has acquired distinctiveness.
2. Slogans serving a promotional function will be objectionable because average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans.
3. Plain descriptive phrase of a slogan is always considered non-distinctive.
In Reebok India Company v Gomzi Active1, the Karnataka High Court held that the slogan “I AM WHAT I AM” was only a common generic English phrase and the proprietor of such a slogan, without any design, has to establish that, by extensive and continuous use, the slogan had become distinctive of the products of the plaintiff, so that the phrase having lost its primary meaning acquired a secondary meaning in the market in relation to such products manufactured by the Gomzi Active.
In Stokely Van Camp Inc. v Heinz India Private Limited2, the division bench of the High Court of Delhi, while dealing with the infringement of registered mark/expression ―Rehydrate Replenish Refuel in relation to energy drinks held that a registered trademark is not infringed when it is used to describe the characteristics of a product.
Therefore, slogan marks are governed by the same rules as traditional trademarks. Accordingly, a slogan is registrable if it is (a) available for registration, and (b) is inherently distinctive or has developed a secondary meaning.
Under Indian copyright law, a slogan is not literary work. Generally, a slogan consists of few sentences on their own and does not reveal sufficient information, instruction or literary enjoyment to qualify as a literary work.
The High Court of Delhi, in Pepsi Co. Inc. and Anrv. Hindustan Coca Cola and Ors.3, considered whether the phrase “Yeh Dil Maange More” is copyrightable. The court held that advertising slogans are prima facie not protectable under copyright law. Rather, they may be protected under the law of passing-off.
Further, the High court of Delhi, in Godfrey Phillips India Ltd. vs Dharampal Satyapal Ltd. & Anr.4, while dealing with 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 literary work. The Court held that the 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.
1. Reebok India Company v Gomzi Active
2. Stokely Van Camp Inc. v Heinz India Private Limited
3. Pepsi Co. Inc. vs. Hindustan coca cola Ltd. and Ors.
4. Godfrey Phillips India Ltd. vs Dharampal Satyapal Ltd