Why would my trademark be refused?

Distinctive and descriptive are words commonly used in relation to trade marks but what do they mean?

Section 3 (1) (b) of the Trade Marks Act 1994 states that a trade mark shall not be registered if it is devoid of any distinctive character, however if the trade mark distinguishes your goods or services from those of your competitors then it will be eligible for registration. If you are applying to register a trade mark which describes your goods or services or any of its characteristics then this application will fall at the first hurdle. An example could be an application to register CORNISH CLOTTED CREAM for cream.

So, what makes a good trade mark?

As mentioned, when considering an application to register a trade mark, the strength or the distinctiveness of the mark matters. It is undeniable that the more distinctive the mark is, the easier it is to register and protect against future infringers. It is possible to categorise the levels of strength of distinctiveness from strongest to weakest:

1. 1.       Fanciful or coined marks

This is an invented word which holds no meaning other than the actual trade mark itself. Perhaps the most common example is KODAK, a term which possesses no dictionary meaning at all.  These types of words are given the most scope at the registration process due to the fact that as they are made-up words, it poses huge difficulties for competitors to claim that they accidently adopted the same trade mark.  Other examples of coined marks include: XEROX, EXXON and GOOGLE.

1. 2.       Arbitrary marks

These are words which already exist but are going to be used in an area which implies no connection with the original meaning of the word. Without doubt the most well known arbitrary mark is APPLE. Like coined marks, arbitrary marks are afforded a wide scope of protection against third party use however, the disadvantage of picking an arbitrary mark is the inability to stop others from using the mark for goods that are part of the dictionary definition. Other examples of arbitrary marks include: BLACKBERRY, LOTUS and SUN.

1. 3.       Suggestive marks 

These are marks which suggest an attribute or benefit of the product but stop short of being a mere description.  A good example of this type of mark is AIRBUS for aeroplanes. A suggestive mark requires imagination, thought, and perception to reach a conclusion as to the nature of the goods or service it designates. Alternative examples of suggestive marks include: MICROSOFT (suggestive of software for micro-computers), VOLKSWAGEN (automobiles) and WHIRLPOOL (washing machines).

1. 4.       Merely descriptive marks

As mentioned, if you decide to use a phrase which describes product then your rights to exclusive use of the mark will be very limited. COLD and CREAMY for a new ice cream is unlikely to be granted registration due to the fact that it ultimately describes the product provided. It is possible that descriptive marks may become registrable upon the proof that consumers identify that descriptive term with only one company. For more information please read “The difficulties surrounding trade mark selection”. Marks which are clearly descriptive but have developed secondary meaning include: SHARP (televisions), DIGITAL (computers) and WINDOWS (windowing software).

1. 5.       Generic term

A generic term is a word or phrase that is or has become the common term associated with a particular category of good or service to which it relates. There are numerous examples, perhaps the most common being CLOCK, ASPIRIN and KLEENEX. The rationale for the creation of a category including generic marks is so that no manufacturer or service provider should be given exclusive right to use words that generically identify a product. Therefore generic terms are not registrable or protectable. For more information on this area involving the problems for TWITTER and the word TWEET please click here.

Harry Jeffries, Law Student