GUIDANCE ON THE TYPES OF BRANDS THAT CAN BE REGISTERED AND HOW TO CHOOSE THE MOST EFFECTIVE TRADE MARKS

Choosing a distinctive and registrable brand

Trade marks can be some of the most valuable assets that a business may own – and every business has at least one. 

Trade marks distinguish the products and services of one party from those of other traders, and enable consumers to identify the source of those products or services in the marketplace and to repeat their purchasing experience.

Over time, trade marks can also come to symbolise a business’s identity and reflect its reputation. 

What is a trade mark?

What constitutes a trade mark can vary from country to country but, in the UK and EU, the legal definition is broad and includes words, designs, logos, numbers and letters, as well as more unusual types of marks, such as sounds, colours and the shape of goods or their packaging.

Why register your mark?

A trade mark registration broadly gives the owner the right to prevent third parties from using and registering identical and similar marks, for identical products and services, in cases where confusion is likely to arise amongst consumers. 

Where a registered trade mark has acquired a reputation, the owner may also prevent use and registration of identical and similar marks, which cause detriment to, or take advantage of, that reputation or the mark’s distinctive character. 

When selecting a brand, we strongly recommend choosing trade marks that can be registered in the territories where they will be used. Failure to register a trade mark can make it more difficult – and sometimes impossible – to prevent third parties from misappropriating conflicting trade marks or other business identifiers.

What can be registered?

In the UK and EU, to be registrable, a trade mark must be distinctive, ie capable of distinguishing the goods or services of the applicant from those of other traders. 

Additionally, the mark must not be exclusively descriptive of the products and services, or their kind, quality,intended purpose or any of their other characteristics.

The UKIPO and EUIPO will also raise objections to deceptive marks, or marks consisting of the shape or other characteristics of the products, which are necessary to obtain a technical result, which arise from the nature of the goods, or which give substantial value to them. Further restrictions may also apply, in particular, where third parties own conflicting rights.

Selecting an effective trade mark

When choosing a trade mark, it is also important to remember that not all trade marks are equal in the eyes of the law. In the UK and EU, the more distinctive a trade mark, in general, the stronger the protection conferred by registration. 

Whilst trade marks can increase in distinctiveness through use, practitioners often speak of a “spectrum” of inherent distinctiveness on which trade marks can be roughly categorised. 

At the top end of the scale feature fanciful and invented marks, such as AUDI for vehicles or KODAK for cameras. These terms usually have no clear meaning in relation to the products or services for which they are used and are normally easily registrable, being highly distinctive.

Somewhere in the middle of the spectrum fall suggestive and allusive terms. These may vary in distinctiveness but often function has highly effective trade marks, evoking the trade mark owner’s products or services, without directly describing them. Examples include INNOCENT for smoothies or juice (which cleverly conveys the brand’s ethical modus operandi), and JAGUAR for cars (suggestive of the vehicle’s speed and sleek appearance). 

At the lower end of the scale are descriptive marks (which may sometimes become distinctive enough for registration through use), and finally generic terms (which can’t normally be registered as trade marks). 

Recommendations 

• When devising a new brand, aim to choose a highly distinctive mark; in general, the more imaginative, memorable or creative the mark, the greater the chances of registration. Though it is not mandatory for a mark to possess these criteria, the owner of a highly distinctive mark may often find it easier to prevent third parties from using similar marks.

• Try to avoid choosing trade marks which are very descriptive of your products and services. It may be possible to register such elements in combination with other distinctive words or logos. However, it can be more difficult to prevent third parties from using similar terms, particularly in a crowded field.

• Businesses launching entirely new products should be wary of choosing brands names which merely convey what the product is or does. It may be tempting for a business to try to monopolise the name of a product, particularly when first to market. However, such names often border on the generic or can quickly become so.   

• In the event of objections to registration of a trade mark, submissions may persuade the examiner to waive the objection. Remember the distinctiveness of a trade mark must be considered in relation to the products or services of interest – APPLE may not be registrable for fruit, but is very distinctive and registrable for computing and telecommunications equipment! Some objections can also be waived where there is evidence that a mark has acquired distinctiveness through use.

This update is for general information and does not constitute legal advice. If you have any questions regarding trade marks and brand protection, please get in touch with your usual Greaves Brewster contact.

Look out for the next trade mark instalments in our Back to Basics series in the coming weeks, discussing the importance of searching for earlier conflicting rights, and guidance on drafting a trade mark specification of goods and services.