How to protect a slogan?

Copyright protection and registration as trademark of advertising claims

Prepared by Paola Furiosi and Sara Renon

The Italian Supreme Court recently issued two rulings on the legal protection of advertising claims (Decision No. 8276 of 2022 and Decision No. 37697 of 2022). These rulings shine the spotlight on a widely used marketing tool – the slogan – and its forms of protection, especially considering the (often) huge economic investments that go into a successful advertising campaign.

Companies resort to a slogan when they want the consumer to associate a short catchy easy-to-memorize phrase with a product or service. A slogan may, in certain circumstances, be imprinted in the consumers’ mind more than the name of the product or service itself or the logo chosen to identify it.

Given its strategic importance, how would a company approach protecting its slogan under the Italian legal system?

Firstly, a slogan can, under certain conditions, be included among the creative works protected under the Italian Copyright Law (Law no. 633/1941).

Copyright protects works of a creative nature in the fields of literature, music, figurative arts, architecture, theater, and cinematography, whatever the mode or form of expression (art. 2 Law no. 633/1941). Provided the work meets the requirements of Copyright Law, copyright protection arises at the very moment of creation of the work by its author and does not require any subsequent formal action. The work must be an intellectual expression of the author and their personality and idea must be expressed in a new and original creation. The idea in of itself is not susceptible to protection.

Although jurisprudence and case-law are both settled on admitting the protection of an advertising slogan under Copyright Law, a claim is considered a work of art solely when it is creative and not merely aimed at presenting the marketed product to the public.

The Italian Supreme Court recently issued an interesting ruling (Decision No. 8276 of 2022) relating to the creative nature of a slogan and an extremely widespread marketing practice, i.e. the use of a well-know trademark within a slogan in order to exploit its attractiveness to consumers.

The Supreme Court stated that the claim for protection of a slogan (that was also registered with the Italian copyright agency – SIAE) pursuant to article 2 of the Copyright Law required the demonstration of the originality of creation. This originality, according to the Supreme Court, must be excluded in cases where a registered trademark with a strong and autonomous evocative capacity is used within the slogan. The connection to the trademark would then eliminate the creative character of the slogan considered in its entirety.

Marketing agencies should therefore avoid including the brand they wish to sponsor in the slogan if they want to gain protection under the Copyright Law. Granted that the possibility that the combination of an advertising claim with a trademark may render the slogan devoid of creativity and novelty cannot be ruled out a priori, and that a case-by-case assessment must always be made, nevertheless, a claim without explicit reference to a trademark will have a better chance of being recognized as a protectable creative work.

Moreover, the registration with SIAE does not add any grounds to the author’s claims. This registration solely proves the existence of the work at the date of filing, and not its creative nature.

This ruling also highlights the importance of adequately regulating the exploitation of copyright on a contractual level. Companies often hire a third party, for example a marketing agency, to create a slogan in a campaign for a new product. Disputes may arise if the parties fail to adequately regulate the ownership of the copyright on the created slogan, especially when such slogan has already become famous. Furthermore, each transfer of the rights to a work of art requires written proof pursuant to article 10 of Copyright Law. Assistance by legal professionals is therefore crucial to properly negotiate and draft any contracts related to the creation and use of a slogan.

Alternately, one could decide to register the slogan as a trademark, which (unlike copyright) requires a specific procedure and filing to obtain the certification of such right.

The Italian Intellectual Property Code (Legislative Decree No. 30/2010) provides specific requirements for the registrability of a sign as a trademark, which would also apply to slogans, i.e. lawfulness, novelty and distinctiveness. A slogan cannot then be contrary to public order and morality, cannot be identical or similar to a previously registered one and cannot be descriptive of the marked products or services.

The Italian Patent and Trademark Office (UIBM) usually denies registration when it finds that the trademark applied for lacks distinctiveness – i.e., is incapable of distinguishing the products or services of one company from those of other companies. The Italian Supreme Court (Decision No. 37697/2022) recently confirmed this position in relation to the UIBM’s refusal to register the claim “Your skin deserves to be treated well” for cosmetic products, due to lack of distinctive character.

The Italian Supreme Court, called to rule on the UIBM’s decision, clarified that the registration of trademarks made up of signs or indications which are used as commercial slogans is not prohibited. Signs used for advertising purposes must however comply with the required registration criteria, including that of distinctiveness. While it is possible for a trademark to be simultaneously perceived by the public as a promotional message and, at the same time, as an indication of the commercial origin of goods, once the promotional character of the trademark is found to exist, it is essential to also ascertain the actual existence of distinctiveness.

The UIBM excluded the existence of a distinctive character in the slogan and consequently denied registration, specifying that “in order to be distinctive, a slogan must not be translated into expressions commonly used in language, nor must it be confined to a mere communication in everyday terms of the nature or advantages or qualities of the product. On the contrary, the presence of a quid pluris capable of making it perceived by the public as a means of identifying the commercial origin of the products, enabling their distinction from competing products, is indispensable”.

When a trademark possesses all the characteristics for registration, and registration is granted – without prejudice to the risk of any oppositions or actions aimed at ascertaining the invalidity of the registered trademark – the owner enjoys protection that brings significant advantages compared to that granted under Copyright Law. In fact, the registration certificate allows the owner of the rights to be identified with certainty as the owner of the trademark – while for copyright protection it is necessary to provide proof of being the actual author of the work.

Regardless, registration as a trademark also entails strategic evaluations that require the assistance of experienced professionals in the filed such as type of sign (word or device), in which territories to register and classes of goods and/or services to claim in the filing.

In order to protect its claims and all the investments underlying their creation, a Company should be assisted by specialized professionals who can offer assistance in the registration of a trademark at national and international level. First and foremost, the assistance of IP experts is needed to register a trademark, maintain its registration and monitor possible infringing registrations. The implementation of widespread online monitoring (also in the metaverse and with the involvement of technological partners) of possible infringements is also of paramount importance as well as the subsequent notice and take down activities.

Lastly, for the best economic exploitation of the claim, a company can also license and assign to third parties the rights to the claim, being assisted in the negotiation and drafting of the relevant contracts by intellectual property experts.

Let’s Talk

For a deeper discussion, please contact:

Andrea Lensi Orlandi

PwC TLS Avvocati e Commercialisti


Paola Furiosi

PwC TLS Avvocati e Commercialisti