IPA trademark 12.-slogans-phrases-and-multiple-words — IP Australia Trade Marks Manual of Practice and Procedure – 22.12. Slogans, phrases and multiple words

A trade mark may be composed of a number of words. Trade marks composed of more than one word include phrases, mottos, maxims, epigrams, proverbs, and adages. Multi-word trade marks of this type may be categorised as slogans. They are commonly used in the course of trade and advertising to promote a cause, an idea or a product. When deciding whether a multi-word trade mark is capable of distinguishing the applicant's designated goods or services, the same inquiries are made as for a single word. The question of whether or not a trade mark is capable of distinguishing will in either case ‘largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it’ ( W & G Du Cros Ltd's Appn (1913) 30 R.P.C. 660 at 672). A trader may adopt a well-known slogan, modify a well-known slogan, or invent a new slogan. As in the case of single words, evidence, get-up and/or any other circumstances may establish that a trade mark is capable of distinguishing the applicant's goods or services where this cannot be decided otherwise. Case Law for consideration in relation to slogans includes Comfort Shirt Co Pty Ltd's Appn (No 4) (1961) 31 AOJP 1169 ( Irons itself automatically in the wash ); Johnson & Johnson Pty Limited's App n (1962) 32 AOJP 1214 ( Best for baby best for you ); Chin Chin Trade Mark [1965] RPC 136 ( Chin Chin ); Re Appn by Tandy Corp (1984) 3 IPR 221 ( Worldwide supermarket of sound ).