The difficulties surrounding trademark selection

When a business is in the process of choosing their trade mark it is undoubtedly tempting to select one which describes the product or service provided. By doing so, the business could almost use their trade mark as a form of advertising, informing the consumer about the product from the outset. However, the relevant legal criteria states that a trade mark must be distinctive. In other words, this trade mark must not describe a feature of the product or be a term which is reasonably required for use by other businesses.

In order for this fundamental principle to be achieved, the trade mark might be inherently distinctive, for example a word which is meaningless like HAJEFF, or a word that has meaning but is being used out of context like BLACKBERRY or APPLE.

There is, however, a loophole. A trade mark might be a word which is descriptive of the product, but has in fact become distinctive of one company through considerable use, for example SOUTH AFRICAN AIRWAYS. However, it should be noted that there are sometimes difficulties which arise through using this route. Where a trade mark has been used extensively and has therefore become associated with one particular company, it can sometimes become the generic term for that product. This is an issue which is currently being interpreted by Twitter, who obtain a registered trade mark for the word TWEET. The company said this:

‘There is a risk that the word “Tweet” could become so commonly used that it becomes synonymous with any short comment posted publicly on the Internet, and if this happens, we could lose protection of this trademark.’

A similar issue arose within the dispute between Apple and Microsoft when Apple adopted the trade mark APP STORE to sell software applications for mobile devices. This registration sparked interest amongst Microsoft’s legal team and they soon launched opposition proceedings in the United States. In addition, Microsoft and Amazon joined forces with HTC, Nokia and others in order to invalidate Apple’s trade mark registration throughout Europe.

The argument here centres on the fact that the APP STORE is a generic term and is therefore open for use by all businesses within that industry, exemplified by Amazon’s already existing APPSTORE. Apple decided to ‘back down’ from the dispute, stating:

“…with more than 900 000 apps and 50 billion downloads, customers know where they can purchase their favourite apps. We no longer see a need to pursue our case against Amazon”.

This is burning proof that there remain huge difficulties when attempting to protect a mark which is deemed descriptive. As shown by the Apple case and also by Twitter’s public worries, it is by no means easy to prevent a third party from copying a descriptive mark.

Harry Jeffries