23 Mar What makes a good trade mark?
In this article, Serjeants’ expert team of trade mark attorneys provides an overview of what makes a good trade mark, explaining the value they add to a brand or company, and highlighting why businesses should ensure that they have the relevant protection in place.
What is a trade mark?
A trade mark is any form of words, symbol or sign that allows consumers to distinguish your goods or services from those of another.
A good trade mark is any sign that clearly identifies you as the owner of your goods or services, for example: Google, Samsung, Amazon, Netflix, Coca-cola, McDonalds, Chanel, Prada, Gucci. All these trade marks have become common knowledge and a part of our everyday vocabulary over time. This is because they are all distinguishable brands within their particular field of business that anyone can identify immediately.
Ideally, trade marks should be distinctive and not descriptive. A prime example of a trade mark that is clearly distinctive globally, yet the mark itself does not describe the products that are being sold by the owner is ‘APPLE’.
It is common knowledge that Apple specialises in consumer electronics, software and online services. Although the word and logo used by the company are that related to a piece of fruit, their consumers do not expect to go into an Apple store to purchase an apple. Had the company specialised in selling apples for a living and tried to register the trade mark for apples, they would have been unsuccessful. This is because the general rule of law is that a common word within the English language, for example apple, should be free for everyone to use.
The importance of earlier marks and opposition proceedings
Trade marks are essentially the registration of a ‘brand’, and as such, they are considered one of the most valuable IP rights to a company. Trade marks are the only IP rights that can be renewed indefinitely. Usually, the word or logo of a company or product is how the general public identifies a certain brand. Therefore, it is important to obtain the correct legal protection for it in order to prevent third parties from exploiting your rights.
It is also important to make sure that the trade mark you wish to register is available for registration, before spending a lot of money on advertising/promotional and production materials. You should carry out the correct searches on the relevant trade mark registers to ensure that your mark is in fact new and free to use and register.
As we have seen over the years third parties look to exploit the reputation and stature of an earlier brand by imitating/producing something similar themselves. This often leads to infringement actions being brought against the latter, on the basis that the end consumer is confused into believing the product they are purchasing is being sold by the same company. Such actions are brought against third parties, as not only is the infringement financially detrimental to the company but also to the brand in itself.
We often see in such opposition proceedings that even though the trade marks in themselves are not identical, the similarities between the two brands allows the owners of the earlier trade marks to take infringement action against the later filed marks. Therefore, it is always important to check availability of the trade mark you are trying to register, in order to avoid opposition and cancellation proceedings down the line.
Generic use and cancellation proceedings
Another issue we can encounter with registered trade marks is that of generic use. This is when the trade mark becomes so popular that the term identified for the product is replaced by the trade mark itself.
A good example of this is the word for adhesive tape, which is now known as ‘Sellotape’ around the world. Even though the term ‘Sellotape’ was originally registered as a trade mark many years ago, it was soon adopted as the generic term used for adhesive tape. This resulted in cancellation proceedings being brought against the trade mark based on its descriptive function, and the term has since been added into the English dictionary, allowing others to use the term worldwide. Hence, the owners can no longer take any action against third parties who wish to use the term to sell their products. As mentioned above with the case of ‘apples’, the term is now free for everyone to use.
Trade mark protection can be a very beneficial and valuable asset to a brand and company. You should therefore ensure that you have the relevant protection in place. Keep in mind that the made-up words make the best brands as they are more likely to be seen as distinctive, and make sure the mark is free to use and register before you spend time and money developing the brand.
Please call the Serjeants team on 0116 233 2626 for further advice about trade marks, or send an enquiry here.