The latest catwalk season is almost over and the new fashion trend appears to be slogans.
Although people have used fashion to project statements for many years, the use of fashion to project political messages and voices of dissatisfaction with corporate entities via social media platforms and other mediums is now widespread. Indeed the recent protests against President Trump have resulted in the entertaining exercise of looking for the wittiest quips. On the other side of the coin, slogans made famous by brands or public figures may be re-hashed to project a different message. A favourite within Fox Williams is “Make Welsh rugby great again!”
However, such activities are not without risk.
If a particular slogan refers to a third party such as a famous individual or well-known company, it may be a breach of trade mark or other intellectual property laws.
Slogans can be registered as trade marks if they are sufficiently distinctive – for example, JUST DO IT. Use of an identical slogan for goods which the trade mark is registered would infringe the trade mark.
Further, a slight amendment may not avoid infringement as the use of an identical or similar mark in relation to identical or similar goods would also be infringement if there is a likelihood of confusion. The buck does not stop there – even if the slogan is clearly a protest or quip and therefore confusion may be unlikely, if the slogan has a reputation, the trade mark owner could claim infringement on the basis that the protest or quip is blurring, tarnishing or freeloading from the distinctive or reputable trade mark.
It is not just slogans that can be protected by trade marks – a mark capable of graphical representation and which is distinctive can be registered, the most obvious being company names and names of individuals who use their names to offer goods or services. The same rules apply to use of these names as to slogans.
So, what if a mark or slogan is not on any trade mark register? Unfortunately, this is not necessarily the green light to go ahead. If someone has generated goodwill, the laws of passing off can be used to protect it against a misrepresentation which may cause it damage. Goodwill is the benefit of a name, reputation or connection of a business – it is the attractive element which brings in custom. It can include celebrity or character image rights – for example, Rihanna was able to stop Topshop from selling t-shirts with a photograph of her without her approval. Rihanna was able to show misrepresentation because the Judge considered that the image gave a fairly strong indication that the t-shirt may be a product authorised by Rihanna herself when it had in fact not been.
Trade mark and other intellectual property laws can be used to trump (no pun intended!) slogans in certain situations. However, this may not tactically be the top trump (again!!) card to play by a rights holder given the ease by which a negative backlash to an over-zealous approach could be spread via social media.
Although, with reference to some David Bowie song titles, designers of clothing utilising slogans may care more about whether there is “Life on Mars” than third party IP rights, or be prepared to “Let’s dance” if faced with allegations of infringement, they should be aware that rights owners may be able to utilise IP laws to put them “Under pressure.”
The contents of this article are intended for general information purposes only and shall not be deemed to be, or constitute legal advice. We cannot accept responsibility for any loss as a result of acts or omissions taken in respect of this article.