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Tips on choosing a good trade mark for your business or new product

Article by Shamin Raghunandan and Kaajal Nagindas – Spoor & Fisher

If you are starting a new business or launching a new product to the market, it is likely that you have created intellectual property, specifically trade marks, worthy of protection.

As an entrepreneur, your trade mark is your commercial identity. It underpins your marketing strategy and is your means of communicating with a consumer. Trade marks, united with the ethos of your business, influence consumer choice. Trade marks should not be underestimated and a good trade mark, used with care, can last indefinitely. STELLA ARTOIS for alcoholic beverages has over 600 years of brewing history. Its story began in Belgium in 1366 and hints of its history are displayed on the bottle.

This article contains a few tips on what to use and what to lose when selecting a trade mark.

What is a trade mark?

Legally, a trade mark is usually a word, slogan or logo (or any combination) which identifies the products or services of one business and distinguishes it from another. Other trade marks can include numbers, shapes, sounds, colours and a container for products. Well-known examples are the much loved KOO brand for baked beans, the distinguished INVESTEC name in private banking, the catchy FINGER LICKIN’ GOOD slogan for fried chicken and the iconic COKE bottle shape for beverages. To qualify for legal protection, a trade mark must be inherently distinctive and should have no meaning in respect of the products or services for which they are used.

Trade marks can generally be classified into the following distinctiveness categories: invented, arbitrary, suggestive, descriptive and generic.

Trade marks that pass the distinctiveness test:

Invented trade marks are the strongest and afford the broadest scope of protection. They are easy to protect from use by another. They are newly created words that do not have a dictionary definition. KODAK for cameras, DULUX for paint and XEROX for copiers are well-known examples.

Arbitrary trade marks are common words that have a dictionary definition, but which are unrelated to the products or services. They are used in an unfamiliar way which also makes them a good choice. Examples include APPLE for computers, CAMEL for cigarettes and ORACLE for software. It is important to bear in mind that as an owner of an arbitrary trade mark, you may not be able to stop others from using the mark for products and services in the industry where it has a meaning.

Suggestive trade marks suggest a characteristic, quality or benefit of the product or service with which they are used, but they stop short of merely describing the nature of the product or service. They may also be allusive and require some thought before a consumer makes the connection with the product or service. PLAYBOY for magazines, MICROSOFT for software and AIRBUS for airplanes are clever examples.

Trade Marks that fail the distinctiveness test:

Descriptive trade marks plainly describe the product or service or its characteristics, quality and origin. A descriptive trade mark would not stand out from the crowd and consumers will not be able to make the connection that it represents your business and your business alone. They should be avoided as your rights will be narrow. Keep away from trade marks such as LIGHT for smartphones or computers, a plain slogan such as WE DELIVER ON TIME for courier services and ALL NATURAL for textiles of natural fibres.

Likewise, laudatory words such as BEST, SUPER and FIRST-CLASS cannot be registered as trade marks. In all likelihood, these terms are already is use by others and should continue to remain free for use. Descriptive trade marks are generally not registrable, unless the owner can show that the trade mark has acquired a secondary meaning. This secondary meaning is acquired through years of use driven by massive advertising and publicity campaigns. Case in point is WINDOWS for windowing software. As many smaller businesses do not have vast advertising spend, protection through secondary meaning may not be viable.

A generic term is the common name associated with a type of product or service and therefore can never receive trade mark protection. The reason behind it is that everyone should be free to use such common names to describe a product or service. For example, SMARTPHONE, RAZOR and BANKING can never qualify for trade mark protection even with enormous advertising. It is important to note that even a strong trade mark, if misused, can become a generic name. Prime examples are ASPIRIN and CELLOPHANE.

Geographical names, surnames and objectionable trade marks

Geographical terms are also precluded from registration as a trade mark if the specific geographical location is famous or known for the category of products or services concerned. LONDON for gin or RUSSIA for vodka cannot be protected.

Trade marks which are primarily common surnames are generally regarded as not capable of distinguishing. SMITH’S SHOES for shoes and CHETTY’S CURRY HOUSE for Indian cuisine would be very difficult to register as they too should be free for use. However, surnames can be registered if the owner can show that it has acquired a secondary meaning. McDONALD’S for restaurants is a perfect example.

If a trade mark conflicts with law or is immoral or offensive, it will be barred from registration and negatively impact sales. If the use of the trade mark will contravene labelling requirements, it will be denied registration. An example of a trade mark that is likely to give offence to a group of people is JESUS for clothing. It is wise to steer clear from racial or religious undertones in trade marks.

Searching

As soon as a trade mark has been selected/created, taking into account these dos and don’ts, the next step is to make sure it is clear for use. The search will provide assurance that when the trade enters the market, there will be no conflict with the rights of others. Trade mark specialists can provide guidance and proper advice on whether you trade mark of choice is indeed available for use. Searches should be done early on and not just before the big launch. If a distinctive trade mark is available for use, an application for registration should be made straightaway.

To recap, a trade mark should be unique and unusual for your product or service. Be a pioneer and invent a new word. Be bold and avoid descriptive words, generic terms, common surnames and other objectionable words. Searching is good practice. If your trade mark is clear for use, consider applying to register it, using the services of reputable trade mark specialists who can guide you through the entire process.

Spoor & Fisher is a proud Partner of the National Small Business Chamber (NSBC).