Company: For any UK company designing and creating a trade mark for its business
Industry: All sectors
Distinctive Trade Marks vs. Descriptive Words, Industry Terms, Generic Marks…
Introduction
Every business uses a trade mark, with some more effectively than others. There are a wide variety of trade marks that can be used, including single words and phrases; images, logos, and 3D; colours, sounds and smells; collective and certification; multimedia and motion. It is also usual for organisations to use a combination of styles/techniques along with trade mark registration strategies in order to ensure their mark is distinctive and therefore capable of registration and enforcement.
For “word only” trade marks it is essential to be able to demonstrate that your trade mark does not describe the goods/services (ie products) it seeks to protect. Therefore using common English words that define your products, or industry terms that are commonly understood in your sector to describe your products are likely to be rejected by the UK IPO. By way of outline the UK IPO sets out a number of hurdles to overcome in its Guidance: Unacceptable Trade Marks.
By way of initial start you may be inclined to utilise the services of a marketing professional/agency. This could well assist with your value proposition (a clear statement that highlights why a customer would select your particular business) enabling you to effectively communicate the advantages for customers in using your products upon recognising your trade mark.
The (Pain Point)
Businesses often need to communicate effectively with its target audience and to do so unambiguously without confusing the market. Creating a truly independent and distinctive trade mark or series of company trade marks to promote particular products often compels the company to ensure that copying or mimicking by competitors is minimised or even eliminated. Therefore it is paramount to ensure your trade mark is capable of registration, as well as effective enforcement.
The Challenge Faced
Avoid using words that describe what you do or sell, including generic and industry terms. The simple fact is that irrespective of trade marks law, by using non-distinct words and phrases, you will struggle to carve out a suitable identity for your business, and be wholly lost in the millions of online searches that will result. When sailing the ocean searching for clients, you need a distinctive sail for clients to see!
Very often applicants that file descriptive/non-distinctive trade marks, will not only have their trade mark applications refused, but will lose time in the preparation and filing of the application, along with their application fee. Whilst the UK IPO can be helpful and provide guidance, it cannot advise on your application nor will it allow you to modify your trade mark once it has been filed.
Think about using invented words, unique word arrangements, coining a new thought or expression…
The strongest trade marks are those that are “inherently distinctive” and are often those invented words that are used as trade marks. These are simply made up words, such as: BOVRIL for a meat extract paste; KODAK for printing and films; GOOGLE for digital services; PEPSI for drinks; ROLEX for watches; ADIDAS for footwear and clothing. You will need to recognise that these are likely to be the most expensive to promote because you will need to help educate the market and consumers to understand and associate your products with your trade mark. On the flip-side these are the most effective in terms of promotion and protection.
Another way in which acceptable marks are registered, will be those that take advantage of usual or common English words that do not directly describe the products, but are nonetheless used in a distinctive way. These can include APPLE for digital products; DOVE for skincare; PENGUIN for publishing; NEXT for clothing; VIRGIN for air travel.
You could of course use foreign words and phrases, but be wary of using Scottish gaelic words that will likely be seen as part of the overall (British) language which could result in the examiner considering that your trade mark is simply descriptive of your products, eg: ‘coire’ for kettle products, or ‘sgian’ for knives. It is less likely that foreign words will be easily recognised and therefore technically could be capable of registration.
Suggestive trade marks can be very effective marketing tools that compliment trade mark registration rules. For example these marks tend to give rise to an idea that could be associated with your product without actually describing it. These include AQUAFRESH for oral hygiene; AIRBUS for aerospace products; NETFLIX for media-streaming services; TOPGEAR for motor vehicle publications; INNOCENT for healthy and natural drink products. These types of marks allude to your products without actually describing them.
Why Chosen
I have worked with many businesses in connection with their trade mark applications, and those related trade mark and passing off issues faced by organisations based in the UK and overseas. In particular I have helped companies with their trade mark protection matters throughout most of the world’s territories due to extensive experience and knowledge in this field.
Whether you are about to file and register your trade mark or you are having trade mark application difficulties, you need to be sure that you have a suitable application and are capable of overcoming not only the examiner’s objections, but potentially those third parties who may seek to object to your application during the publication stage.
Client’s often need to understand their position quickly and therefore experienced guidance and support should be obtained. Ideally prior to establishing any business commitments, such as company name registration, domain name acquisition, and social/business media accounts (albeit this is not fatal).
Overall Results
- non-descriptive applications are less likely to be refused;
- avoid the loss of UK IPO applications fees;
- distinctive applications are most likely to be acceptable by the UK IPO;
- avoid the loss of time and effort in making deficient applications;
- reduce the timescale for obtaining a grant of registration from the UK IPO;
- reduce the risk of someone else attempting to register a similar or even identical trade mark to your own;
- reduce the risk of protracted opposition proceedings and costs;
- obtain robust registration and effective protection and enforcement of your business rights;
- secure your unique place in the market, along with the trust and loyalty of customers;
- enhance the value of your business with a valuable trade mark asset.
- Use an experienced and qualified lawyer to prepare and/or progress your trade mark application;
- Do not file descriptive trade mark applications;
- Do not engage with the UK IPO unless you have first received legal advice;
- Do not engage with third parties until you have obtained legal advice;
- Consider that your trade mark is your business mark of quality;
- Your trade mark guarantees that it is your business and no other that promotes and sells your products;
- Consider risks to your business should you fail to protect its trade marks or incorrectly apply for trade mark registration.