The registration of a slogan in Colombia provides legal protection for a word, phrase or expression used to complement a trademark. Although slogans are also commonly referred to as advertising slogans or taglines, under Colombian industrial property law they constitute distinctive signs linked to a specific trademark and must be registered with the Colombian Superintendency of Industry and Commerce (SIC) to obtain the protection afforded by the applicable legislation.
A slogan can strengthen a trademark’s market positioning, communicate a commercial promise and help consumers identify the business origin of particular goods or services. However, to qualify for registration, it must satisfy the applicable legal requirements concerning distinctiveness and must not fall within any of the statutory grounds for refusal.
Some of the world’s best-known slogans include: “Just Do It” (Nike); “I’m Lovin’ It” (McDonald’s); “Think Different” (Apple); “The Ultimate Driving Machine” (BMW); and “Because You’re Worth It” (L’Oréal).
What is a slogan?
Decision 486 of the Commission of the Andean Community defines a slogan as a word, phrase or expression used to complement a trademark. Accordingly, a slogan is not conceived as a wholly independent distinctive sign, but rather as an element that accompanies and reinforces the communication of a particular trademark.
For example, a company may use a short phrase together with its trademark to highlight a characteristic, concept or promise associated with its goods or services. Legal protection does not extend to an abstract advertising concept, but to the specific expression for which registration is sought and its connection with the trademark identified in the application.
Difference between a trademark and a slogan
A trademark is a sign used to distinguish goods or services in the marketplace. A slogan, by contrast, is a word, phrase or expression that complements the trademark and helps communicate its identity, positioning or commercial message.
This distinction has important legal consequences. An application to register a slogan must identify the pending or registered trademark with which the slogan will be used. In addition, a slogan may not be assigned independently from the trademark to which it is linked.
Requirements for registering a slogan in Colombia
To qualify for registration, a slogan must be capable of performing a distinctive function and must comply with the rules governing distinctive signs. The Colombian Superintendency of Industry and Commerce examines each application by considering the expression submitted, the associated trademark, the relevant goods or services and any prior rights identified during the examination process.
The principal matters that should be reviewed include the following:
- The slogan must consist of a word, phrase or expression capable of being used as a complement to a trademark.
- The application must identify the pending or registered trademark with which the slogan will be used.
- The expression, considered as a whole, must possess sufficient distinctive character.
- The slogan must not merely describe the characteristics, qualities, intended purpose, geographical origin or other features of the relevant goods or services.
- The expression must not be generic, customary, misleading or otherwise prohibited under the applicable legislation.
- The slogan must not infringe earlier third-party rights, including prior registrations or applications that may give rise to a likelihood of confusion or association.
Overly common, purely informational or exclusively promotional phrases may face objections when they are incapable of identifying a particular commercial origin. Nevertheless, registrability must be assessed by considering the expression as a whole and the specific circumstances of each case.
Slogan clearance search
Before filing an application, it is advisable to conduct a clearance search. This search may identify earlier trademarks, slogans or other distinctive signs that could constitute an obstacle to registration.
The search should not be limited to identical expressions. It is also advisable to examine spelling, phonetic, conceptual and structural similarities that could create a likelihood of confusion or association, particularly when the signs relate to the same or commercially related goods or services.
The search results make it possible to assess the level of legal risk and, where appropriate, revise the phrase, strengthen its distinctiveness or select an alternative before incurring the costs and time associated with the registration proceedings.
Slogan registration procedure
The application is filed with the Colombian Superintendency of Industry and Commerce and must identify both the slogan and the trademark with which it will be associated. In general terms, the registration procedure comprises the following stages:
- Assessment of the expression: the proposed slogan is reviewed to determine whether it possesses distinctive character and is capable of complementing a trademark.
- Clearance search: earlier rights are reviewed to identify signs that may affect the prospects of registration.
- Filing of the application: the applicant’s information, the proposed slogan, the associated trademark and the other required information are submitted.
- Formal examination: the SIC verifies whether the application complies with the applicable formal requirements.
- Publication: the application is published so that eligible third parties may file oppositions within the prescribed period.
- Substantive examination: the authority determines whether the slogan satisfies the legal requirements and whether it conflicts with earlier rights.
- Decision: the Superintendency issues a decision granting or refusing registration. The decision may be appealed in accordance with the applicable procedural rules.
The duration of the proceedings may vary depending on the circumstances of the application, the filing of oppositions, official requirements and any appeals that may be lodged. Accordingly, no single processing time can be guaranteed for every application.
Term of protection of a registered slogan
The term of protection of a slogan is subject to the term of the trademark with which it is associated. Consequently, its protection depends on the existence and continued validity of the rights in the trademark that it complements.
The applicable legislation also provides that a slogan may only be assigned together with the trademark to which it is linked. This legal relationship must be considered in assignments, corporate reorganizations, acquisitions of industrial property portfolios and transactions involving the licensing of intangible assets.
Why register a slogan?
Registering a slogan makes it possible to consolidate the expression as an industrial property asset associated with a trademark and facilitates the protection and enforcement of the distinctive commercial message used by a business in the marketplace.
The principal benefits include:
- Obtaining legal protection for the registered expression in connection with the associated trademark.
- Strengthening the trademark’s identity and commercial positioning.
- Reducing the risk that third parties may adopt confusingly similar expressions for related commercial activities.
- Facilitating the management, negotiation and valuation of the company’s industrial property portfolio.
- Establishing a legal basis for pursuing the appropriate remedies against uses that may infringe the rights conferred by registration.
Frequently asked questions about slogans
Is a slogan the same as a trademark?
No. A trademark distinguishes goods or services, whereas a slogan is a word, phrase or expression used to complement a trademark. Both are distinctive signs, but they perform different legal functions.
Can a slogan be registered without a trademark?
The application must specify the pending or registered trademark with which the slogan will be used. Therefore, the slogan must be linked to a particular trademark.
Can any advertising phrase be registered?
No. The expression must satisfy the applicable registration requirements. Generic, customary, merely descriptive, misleading or non-distinctive phrases may be refused, as may expressions that conflict with earlier rights.
Can a slogan be sold separately from the trademark?
No. The applicable legislation provides that a slogan must be transferred together with the trademark to which it is associated.
Is it advisable to conduct a clearance search before filing?
Yes. A professional clearance search may identify relevant earlier rights, assess potential risks and support informed decisions before filing the application. Although a search cannot guarantee registration, it is an essential tool for evaluating the viability of the proposed slogan.
Legal advice on slogan registration
Cárdenas Vega Asesores has attorneys specializing in intellectual property and trademark law who can assist with the assessment, clearance search, filing, prosecution and defense of slogan registration applications in Colombia.
A preliminary assessment of the expression and its relationship with the associated trademark is particularly important for identifying potential objections and preparing an application that complies with the applicable legal requirements.