How to choose a trade mark

Written by Anastasia Troshkova | June 20, 2022

Trade Marks

One of the key steps in selecting a trade mark is developing a list of potential brand names and identifying their distinctiveness, or strength, from a trade mark perspective.

Distinctiveness in trade mark law means that consumers must easily understand that a particular brand identifier is a trade mark, and not, for example, a description of the product or service in question.

In general, there are 5 types of brand names, in order from the strongest to the weakest trade mark strength:

· Fanciful/coined words. The strongest and most distinctive trade marks are coined or made-up words that do not have a specific meaning (e.g., Google, Adidas). These types of trade marks are usually easy to register and they afford the broadest protection against third-party use of identical/similar marks.

· Arbitrary marks. Arbitrary marks are the words that have a common meaning but do not describe products or services in question (e.g., Apple for computers). These types of marks are also relatively easy to register and afford a broad protection against third-party use of identical/similar marks.

· Suggestive marks. Suggestive marks hint at the goods or services in question, or suggest some attribute, characteristic or quality of the goods/services in question (e.g., Citibank – suggestive of financial services in cities). These are not as strong as fanciful or arbitrary marks, but are generally registrable and could provide a good protection against third-party use.

· Descriptive marks. Descriptive marks are words that describe goods/services in question or their attributes, quality or characteristics (e.g., International Business Machines, American Airlines). It is difficult and not always possible to register a descriptive mark, and a scope of protection will be limited, as the competitors may need to use the words comprising the mark to describe their goods/services and they will be entitled to do so. Descriptive marks could however acquire distinctiveness through a substantial use in trade over a period of time, which is called ‘acquired distinctiveness’.

· Generic terms. Generic terms are words commonly used in relation to goods/services in question (e.g., Hair Salon for hair salon services). Generic terms cannot be registered as a trade mark nor can be protected against third-party use.

Other factors to consider:

Surnames. In many jurisdictions, surnames are not registrable as trade marks, unless they acquired distinctiveness through substantial use in trade over a significant period of time.

Geographic locations. In many jurisdictions, it is also not possible to register a name of geographic location as a trade mark (e.g., Paris for clothing).

Briffa, being expert in all aspects intellectual property law and practice, will be happy to advise you on the strength of your brand name and put a trade mark protection strategy in place. If you would like to discuss protection of your brand, please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our specialist IP lawyers.

Written by Anastasia Troshkova, Associate

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