A potential saving grace: acquired distinctiveness

A potential stumbling block for a trade mark application is a lack of distinctiveness.

As the examination process of trade mark applications is subjective, it is possible that a mark you deemed as distinctive may be deemed as being descriptive by the IPO examiner.

In many cases this calls an end to the registration bid for that trade mark, however, those businesses who have been using their trade mark for a number of years before submitting their application may have a saving grace in the form of acquired distinctiveness.

Acquired distinctiveness allows you to submit evidence which shows that through the marks use it has developed a distinctiveness which would differentiate a previously descriptive mark.

The evidence you need to put forward include sales figures, advertising budgets, product packaging examples and examples of your sales materials.

This distinctiveness needs to have developed over a number of years, an unofficial number of years to use as a rule of thumb is 5 years. You can apply for acquired distinctiveness before you have been using the trade mark for 5 years but you may be limited in your evidence therefore having a lesser chance of success.

This is growing in popularity as a way of registering a mark which could not have been registered before. You would be surprised how many of the well-known brands out there were based on acquired distinctiveness applications from the start.

For more information on how you can take advantage of this distinctiveness loophole, contact The Trademarkroom.

By Ellis Sweetenham