Brand recognition is important for creating brand value. No wonder, irrespective of companies being big or small they spend huge sums of money on advertisements and promotion of their brands/trademarks. Catchy slogans and taglines are one of the effective ways of drawing attention to a businesses’ brand, their products & services and are often used in advertisements and marketing.
Slogans have great recall value, create a distinctive identity of the brand in the consumers mind, they highlight the benefits of goods or services and often impart certain emotions and instils positive feeling or incentive. For example, when we come across a catchy phrase/slogan like “Because you’re worth it” it instils a positive feeling and there is an instant connect with the brand L’ORÉAL.
Are slogans and taglines protected under intellectual property laws in India? The answer is yes!
In this article we will explore what kind of intellectual property protection is available to slogans and taglines in India, as is recognised & upheld by Indian Courts.
Are slogans and taglines protected under Copyright law?
In Pepsi Co. Inc. & Anr. vs. Hindustan Coca Cola & Ors., the plaintiffs claimed that the phrase YEH DIL MANGE MORE is original literary work and is protected as such under the Copyright Act and also as a trade mark. The court observed that “although the task of devising slogans often requires a high level of skill and judgement as with titles, they will usually not qualify for copyright protection as original literary work. The court held that it appears that the advertising slogans are prima-facie not protectable under the Copyright Act. They may be protected under the law of passing off in case the plaintiffs make out such a case.
In Godfrey Phillips India Ltd. vs. Dharampal Satyapal Ltd. & Anr. the Plaintiff claimed that it had copyright in the slogan “Shauq Badi Cheez Hai”, which is original literary work of the plaintiff created through advertisement agency and that the defendant should be restrained from using the advertising slogan and campaign “Swad Badi Cheez Hai”. The court held that the slogan “Shauq Badi Cheez Hai” (of the Plaintiff), being combination of common words, would not fall within the scope of “Artistic/litrary work” under the Copyright Act. Slogan “Shauq Badi Cheez Hai” (of the Plaintiff) 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” (of the Plaintiff) as well as “Swad Badi Cheez Hai” (of the Defendant) are commonly spoken in Hindi language in day to day life. That apart, the slogans, in my view, are not copyrightable. Plaintiff can at best press for a passing off action by making out a case in its favour.
Are slogans and taglines protected under Trade Mark law?
In Stokely Van Camp, Inc. & Anr. vs. Heinz India Pvt. Ltd., the plaintiffs had filed a suit claiming infringement of their registered trademark/expression “Rehydrates Replenishes Recharges” apart from other reliefs. The court was of the opinion that the words which form part of the registered mark/expression were commonly used in trade to describe the character, quality and attributes of an Isotonic drink (which was sold by the Plaintiff). The court further observed that it is not disputed that descriptive words are not registrable and cannot be used as trade marks. The only requirement is that such marks ought to have acquired a secondary distinctive meaning. And based on the documents placed on record the expression “Rehydrates Replenishes Recharges” is not distinctive of the plaintiff’s product. The same view was upheld by the Division Bench in the appeal filed by the Plaintiff/Appellant.
In PROCTER & GAMBLE MANUFACTURING (TIANJIN) CO. LTD. & ORS vs. ANCHOR HEALTH & BEAUTY CARE PVT. LTD. the Division Bench of Delhi High Court held that the use by the respondent/plaintiff of the expression ―ALLROUND PROTECTION in its advertisements and on its product is as a slogan or a tagline. Such slogans/taglines are definitely a trade mark within the meaning of Section 2(m) & (zb) of the Trade Marks Act, 1999 being capable of represented graphically and distinguishing the goods of one from another and used for indicating a connection in the course of trade between the goods and the person having right to use the mark.
The court further held that the words ―ALLROUND PROTECTION cannot be said to be descriptive and the respondent / plaintiff‘s trade mark ―ALLROUND along with the suffix ―PROTECTION is in the nature of a slogan / tagline, the use whereof particularly in visual advertising has now been accepted as enhancing the brand equity.
Accordingly, the appeal filed by Procter & Gamble against the injunction order passed by the Single Bench of Delhi High Court, injuncting Procter & Gamble from using the trademark ―ALL-AROUND PROTECTION / ―ALLROUNDER or any other mark deceptively similar to Anchor’s trademark ―ALLROUND, was dismissed.
Procter & Gamble against the above-mentioned decision of Division Bench of Delhi High Court filed petition for special leave to appeal before the Supreme Court of India. The Apex court upheld the decision of the Division Bench and dismissed the Special Leave Petition.
Some of the famous slogans and taglines which have been granted trade mark registration in India are:
· McDonald’s – i’m lovin’ it
· Nike – JUST DO IT.
· Raymond – THE COMPLETE MAN
· KINGFISHER - THE KING OF GOOD TIMES
Conclusion:
In view of the above it can be concluded that Courts are reluctant in granting copyright protection to slogans and taglines due to the use of common place words and sentences and feel they do not qualify as original literary work.
However, slogans and taglines are accorded protection under Trade Mark law provided, like any other mark seeking protection under the law, they are able to pass the test of distinctiveness i.e. either they are distinctive per se or have acquired distinctiveness and are associated with the goods or services & business of the proprietor.
The content of this article is intended to provide a general guide on the subject matter. Legal advice should be sought about your specific circumstances.
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