The distinctiveness dilemma, what to avoid when applying for a trade mark

March 13, 2017, By

Puma has recently had its trade mark application for FOREVER FASTER refused in relation to footwear and sports goods. The EU General Court found that the mark was a simple laudatory statement which wasn’t sufficiently distinctive and, on that basis, it refused the application…

Poor Puma? Well, the trade mark rules on distinctiveness are pretty strict for good reason. A trade mark is a monopoly right which, once registered, prevents other parties from using the same or a confusingly similar sign. This means that the trade mark registries need to be careful about what they allow to be registered. If they’re too generous with registration certificates, we’ll end up in a world where anything and everything is protected but there’s no room for competition or innovation. As a result, there are two key rules in place to govern trade mark applications, essentially trade marks can’t be:

  1. Descriptive of the goods or services that they protect; or
  2. Devoid of any distinctive character.

(there are also some other rules about trade marks which are identical/similar to pre-existing marks, offensive, generic or indicate geographical origin, but let’s leave these for another day).

Selecting a trade mark which avoids falling foul of these rules is a difficult process. Although it’s always tempting, from a marketing perspective, to pick a brand name which describes your goods or services, (e.g. WeSellBooks for a book shop) it’s fairly easy to spot when a mark is too descriptive. A lack of distinctiveness however is much harder to assess, as Puma has just found. In the case of FOREVER FASTER the Court said that the mark simply suggested that goods could make you ‘even faster’ or ‘go faster for longer’, this is a promotional statement which is common in sportswear and, as a result, it is not a signifier of origin. On that basis, it isn’t sufficiently distinctive to be registered.

So how can this issue of distinctiveness be overcome? Well, there are a few options:

Give up – no don’t, you’re better than that.
Add a distinctive element to your application – e.g. Briffa’sBooks
Change your word application to a logo application – a logo is inherently more distinctive than a word, although the application is slightly less useful as it has a narrower field of protection.
Wait until you have “acquired” distinctiveness – this is what the big brands do, essentially this involves using your brand so much that consumers start to associate it with you and only you.

Of course it will also help if you can get some advice before making an application; luckily Briffa’s solicitors are on hand to guide you through the process, from initial assessment to registration. Please just email [email protected] to find out more.

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