14 May 2013

Your newly created logo or brand name does not qualify as a trademark!

The Dilemma?
Consider this scenario: You came up with a killer brand name for your new products. You spent tons of money marketing and promoting your products bearing the brand name. Your market shares explodes and now you decide its time to protect the goodwill you have painfully generated in the brand name over the past year. You file an application for registration for the brand name, only to be rejected by the Trade Mark Office on grounds of non-distinctiveness.

The above could be avoided if proper research has been made prior to committing to the brand name. When selecting a new brand name for your products or services, it is important to strike a balance between marketability and distinctiveness:

  • Marketability helps maximises market exposure for your products or services. 
  • Distinctiveness makes it easy for consumers to associate a product or service with your company. 

A distinctive brand name can be registered as a trademark.
In practice, it is often difficult to achieve a right balance between marketability and distinctiveness; the most marketable mark always tends to be the least distinctive, and vice versa. By applying basic trademark principles, you can ensure that your brand name is both marketable and distinctive.

Is your brand name distinctive?
For a mark to be registrable, it must not be devoid of any distinctive character. To determine distinctiveness, trademarks may be generally classified into the following categories (listed from most to least distinctive):

Fanciful mark 
Fanciful mark is inventively-coined and has no meaning. STARBUCKS and EXXON are examples of such marks. Fanciful trademark is considered the most distinctive and is afforded the greatest protection.
Arbitrary mark 
Arbitrary mark comprises common word which is used in a manner that their normal meaning bears no relation to the products or services to which they are applied. APPLE for computers and DIESEL for clothing are examples of arbitrary marks.
Suggestive mark 
Suggestive mark tends to relate to the quality or characteristic of the products or services, although a consumer would have to exercise some degree of imagination in order to determine the characteristic of the products / services. 7-ELEVEN for convenience store is an example of a suggestive mark.
Fanciful, arbitrary and suggestive marks are easy to register as there is no apparent connection between the mark and the products or services. However, it is often difficult to market these marks as more effort is required to convey the qualities of the products or services to the general public.
Descriptive mark 
A descriptive mark directly describes the quality or characteristic of the products / services. Examples of descriptive marks include Denim for jeans or trade marks containing laudatory terms such as BEST and SUPERIOR. A descriptive mark is prima facie unregistrable, but may become registerable upon substantial use.
Descriptive mark is the easiest to market since they simply describe the products / services they are marketed with. However, registering descriptive mark is often costly as it is routinely objected by Trade Marks offices. 
Generic mark 
Generic mark consists of common names for the products or services with which it is used. Generic mark is unprotectable since they are incapable of differentiating products or services of one trader from another.

Striking the Balance
When choosing your brand name, primary consideration should be given to mark that is sufficiently distinctive (to qualify for registration) and yet easily marketable. Finding this balance can be time-consuming. However, the reward of pairing marketability and distinctiveness ensures marketing ease and appropriate legal protection for your trademark.

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