Protection of slogans under French law

21 January 2005

Audrey Yayon-Dauvet, Isabelle Leroux

Because I’m worth it”®: how many drafts, research, enquiries, marketing and legal professionals are mobilised in order to create and protect the best possible slogan: one which is timeless, original and which will touch people, such as this forceful slogan, filed as trade mark by the company L’Oréal in 2001?

In its general meaning, a slogan is a concise, uniting and striking formula, which generally aims at summarising the quality of a product or a service. It should catch the attention of the customer and is most of the time composed of words taken from common language, formulated in an original way.

A good slogan, like a good title, is a significant element of identification. With regards to its commercial value, a slogan is protected against any fraudulent use. Three legal protection grounds may be claimed in respect of trade marks, copyright and unfair competition.

Protection by trade mark law

According to Article 711-1 of the French Intellectual Property Code (“IPC”): “The service or trade mark is a likely sign of chart being used to distinguish the products or services from a person or entity. In particular (a) denominations in all the forms such as: words, combination of words (…) may constitute such a sign.”

A slogan is defined as a “combination of words” and can, then, be protected pursuant to the above-mentioned provision.

However, it should be distinctive and not generic or descriptive[1]. Consequently, it should not be a sign, which in everyday or technical language simply constitutes the necessary, generic or usual designation of the goods concerned. It should not designate a feature of the product, particularly the type, quality, quantity, purpose, value, etc. of the said product, as stated under Article L. 711-2 of the French IPC.

In order to be considered as valid and not revocable, the trade mark should be seriously used to designate products or services.

The sign should also be available and not already used by a third party. Trade marks “Bienvenue dans la vie.com” (meaning “Welcome to life.com”) and “La vie.com” (meaning “Life.com”), filed by the company France Telecom within its communication campaign, were declared partially invalid by the Court, since they were considered as wrongly taking advantage of the prior registered name and trade name “La Vie.com”, owned by another French company[2].

The addition to a figurative element, a specific calligraphy may confer a distinctive character to the trade mark, analysed as a whole. The slogan “J’♥Paris” (meaning “I ♥ Paris”) is valid trade mark since the association of a personal pronoun, a heart and the name of the city Paris, constitutes an arbitrary denomination[3].

Filing a slogan as trade mark seems to be the most efficient way to protect it, under French law, since it provides evidence of its ownership and that its owner benefits from prior rights, even though it would not be understood as granting a monopoly on the use of common words composing such slogan.

Protection by copyright

According to Article L. 112-1 of the French IPC, a slogan, even a very short one or one composed of few common words, may be protected by copyright, only if it is original and regardless of its kind, form of expression, merit or purpose. No registration of the slogan is required in order to grant such protection: “the author of a work of the mind shall enjoy in that work, by the mere fact of its creation, an exclusive intangible property right which shall be enforceable against all persons” (Article L. 111-1 of the French IP Code).

The criterion of originality is only appreciated by the Ccurts, depending on the intellectual and creative effort made by the slogan’s author, in order to make a strong impression on the public.

In order to be protected by copyright, the slogan should not be summarised to an idea because ideas cannot be protected. In other words, the slogan should be “formalised” by the use of terms formulated in an original way.

Since French court decisions are particularly varied regarding the assessment of a slogan’s originality, any sentence of a text which is not in the public domain should be strictly analysed and reviewed before its use or adaptation as a slogan. If it is not, rights should be assigned by the author to the company exploiting the slogan concerned. No clearing of rights means possible indemnification of the author of the original formula, used without his express consent.

For example, the slogan “Un coup de barre, Mars et ça repart”, meaning “When you are shattered, a Mars and then, you go”, is protected by copyright[4]. The same is true in respect of the slogan “L’avenir au présent”, meaning “The future in the present[5].

More recently, French judges decided that the slogan “Donnez du goût à votre communication” (meaning “Give taste to your communication”) is original since, even though its terms are not original per se, they express an attractive message, which provides its originality[6]. A surprising and ingenious combination of these words (communication/taste) and their linguistic form, prove the creative imagination of the author of the slogan.

However, the slogan “Simplifiez-vous le monde” (meaning “Make the world easier for you”) is not considered as original, since its aim is to promote the activities of a company which offers services to simplify the international commercial operations of entities. Such slogan is only a declination of the expression “Make life easier for you”; the word “life” is replaced by the term “world” to be adapted to the professional world. The slogan, considered not original, and requiring no creative effort, is therefore not protected by copyright[7]. It is noteworthy that the Paris Court of Appeal decided that the slogan “C’est si simple le confort” (meaning “Comfort is so simple”) is original, since it opposes a substantive and an adjective not usually associated together[8].

According to French copyright law, the absence of registration of the works, not listed in registers contrary to trade marks, makes it more difficult for marketing professionals in respect of existing slogans, whereas the marketing budgets of companies investing in a new slogan are often huge. They take the risk of being prevented by a court from exploiting the slogan despite their investment in time and money, even if it is identical or similar to a prior work, which they may ignore.

Such prior work of the mind, if it is original, is protected even though it is ancient and not famous. Article L. 123-1 of the French IP Code states that the author shall enjoy, during his lifetime, the exclusive right to exploit his work in any form whatsoever and to derive monetary profit therefrom. On his death, that right shall continue for his successors in title, during the current calendar year and for 70 years thereafter (extended by war periods).

Therefore, copyright does not seem to be the best protection for slogans despite some Court decisions (firmly criticised by French doctrine) considering that it is possible in a few words to affirm the personality of an author.

Protection under unfair competition laws

The ground of unfair competition is usually only brought into play when the disputed slogan has not been filed as trade mark. Competition is considered as unfair when a trader undertakes, within its domain of activities and against one of its competitors, a wrongful act, which may damage such competitor, in order to divert a part or whole of its entire customer base through riding on the back of its success. Unfair competition is based upon the principles of tort law as defined in Article 1382 and 1383 of the French Civil Code.

It has been decided that the use of the slogan “sitôt vues, sitôt vendues” (meaning “as soon as seen, it is sold”) was unlawful insofar as it was an act of unfair competition against the prior slogan “sitôt cueillis, sitôt Daucy” (meaning “as soon as picked, it is Daucy” – Daucy being a registered trade mark designating vegetables)[9]. A company, which imitates its competitor’s slogan, spends less money while profiting from its investments for its own communication campaign.

However, the risk of confusion for the public should be characterised.

For instance, the use of the slogan “SelfTrade démocratise la Bourse” (meaning “Selftrade democratises the Stock Exchange”) is not an unfair competition act towards a direct competitor using the slogan “Capitol démocratise la Bourse” (meaning “Capitol democratises the Stock Exchange”) because the disputed slogan (i) was used in different conditions; (ii) was included in more general expressions; and (iii) was used in different supports and media[10]. Therefore, considering those facts, judges tacitly confirmed that common formulae, taken from popular language, and not filed as trade mark, may be reproduced in advertising, insofar as no risk of confusion can be induced.

“Parasitism” (often compared to the remedy of passing off in the UK), benefiting from the goodwill attached to another creation, in order to make profit out of it, is prohibited, even though the parties concerned are not in competition. The Paris Court of Appeal has recently decided that the slogan “Dessine-moi la rentrée…” meaning “Draw me the beginning of term…”, which was used by the company C&A within its communication campaign and was inspired by the famous sentence “Dessine-moi…”, created by Antoine de Saint-Exupéry in his literary work “Le Petit Prince” (“The Little Prince”), constituted an act of parasitism. The wrongful act committed by C&A consisted of using, in its slogan, an expression containing strong evocative power in order to benefit from the awareness attached to the literary work of Saint-Exupéry[11].

Protection by consumer law

Beyond the unfair competition ground, the “good” slogan should also not be misleading to the public. Article L.121-1 of the French Consumer Code prohibits all advertising comprising, in any form whatsoever, representations, information or presentations, which are false or likely to mislead. The slogan “On n’a pas fait moins cher depuis la chaleur humaine” (meaning “Nothing has been so cheap since the human heat”), about fuel oil compared to electricity, has been judged as likely to mislead the public[12].

Conclusion

Given the uncertainties of appreciation of the originality criterion required by copyright, trade mark protection should take priority. Furthermore, copyright infringement or unfair competition may be jointly alleged in an action based on a ground of trade mark infringement, on the condition that the facts, distinct from those of the IP infringement, are raised. The slogan “Le mariage n’est pas une loterie”, meaning “Marriage is not a matter of chance” has been considered unable to be protected by copyright because it is not original, but the court further decided that its use by a competitor in order to create confusion was unfair[13].

Even though the use of a new slogan could be full of pitfalls, essentially based on unknown prior works protected by copyright, the slogan is well-protected by French laws.

Also published in World Trade Mark Law Report.



[1]Montpellier Court of First Instance Court, 14 March 2000, PIBD 2000, 700, III, 319.

[2]Paris Court of First Instance, 7 February 2001.

[3]Paris Court of Appeal, 22 October 1985, RDPI 1986, No3 p.136.

[4]Versailles Court of Appeal, 4 October 1981.

[5]Paris Court of Appeal, 26 January 1989, PIBD 1989 III p.329.

[6]Versailles Court of Appeal, 27 May 2003, Gaz. Pal. April 2004, p.40.

[7]Paris Court of First Instance, 23 November 1999, Gaz Pal. Nov. 2000, p.62.

[8]Paris Court of Appeal, 7 July 1995, Gaz. Pal. 1996. 1, somm. 269.

[9]Versailles Court of Appeal, 27 April 1989 Gaz. Pal. 1990.

[10] Paris Court of Appeal, 2 June 2000, Gaz. Pal. 2001, p.75.

[11]Paris Court of Appeal, 2 April 2003, Gaz. Pal. April 2004, p.39.

[12]Paris Court of First Instance, 18 January 1989.

[13]Paris Court of Appeal, 30 April 1963 JCP 1963 Ed G II 13243.