Branding: How to Pick a Strong Trade Mark

Posted by on Aug 27, 2015 in General | 0 comments

Top computer corporation companies logosBrands are highly valuable business assets, and their worth cannot be underestimated. As of May 2015, Apple, the world’s most valuable brand, is worth an astounding US$145.3 billion.

You can protect your brand by registering trade marks. However, not everything can be registered as one. These include:

  • Signs which are not trade marks;
  • Trade marks which are indistinctive;
  • Trade marks which consist exclusively of signs that designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; and
  • Trade marks which consist exclusively of signs which have become generic amongst the general public or the relevant trade.

The common theme of these four grounds is that a mark must be distinctive to be registered as a trade mark. However, an exception is made for marks which are not inherently distinctive but have become distinctive through use.

An example of such a mark is Sharp Corporation’s “Sharp” logo (for various goods such as televisions). The word “sharp” is commonly used to describe the quality of television displays and is thus not inherently distinctive. However, Sharp Corporation’s use of “sharp” for its televisions over time had caused the general public to associate “sharp” with its televisions. As such, “sharp” had become distinctive through use and could be registered as a trade mark.

Generally, there are 5 types of trade marks:

  • Inventive marks;
  • Arbitrary marks;
  • Suggestive marks;
  • Descriptive marks; and
  • Generic marks.

A strong trade mark is one that is highly distinctive. The spectrum of distinctiveness is as follows:

Trademark Spectrum Distinctiveness

Thus, you should choose an inventive or arbitrary mark to increase your chances of it being registered as a trade mark.

The 5 types of trade marks will now be discussed (in order of strongest to weakest marks).

Inventive marks

An inventive mark is one that is made up and has no meaning at all. Such marks are extremely strong and are registrable as trade marks.

Examples include “Nutella” (for cocoa-based hazelnut spreads) and “Volvo” (for automobiles). 

Arbitrary marks

An arbitrary mark is one that has a dictionary definition, but that definition is unrelated to the goods and/or services covered. Such marks are very strong and are registrable as trade marks.

An example would be “APPLE” (for computers).

Suggestive marks

A suggestive mark is one that suggests, but does not describe, the characteristics of the goods and/or services covered. Such marks are weak and are less likely to be registered as trade marks.

An example would be “PlayStation” (for computers).

Descriptive marks

A descriptive mark is one that describes the characteristics of the goods and/or services covered. Here are some examples of relevant characteristics:

  • Kind;
  • Quality;
  • Intended purpose;
  • Value;
  • Geographical origin; and
  • Time of production of goods or of rending of services.

Descriptive marks are very weak and cannot be registered as trade marks, unless they have become distinctive through use.

Examples include “BREATHABLE” (for sanitary napkins) and “LOVE” (for jewellery, as “LOVE” alludes to one of the intended purposes of jewellery, which is for them to be bought as gifts of love). 

Generic marks

A generic mark is one that has become a common name in the trade for the good(s) and/or service(s) for which registration is sought. Such marks are extremely weak; they are seen as “undeserving of protection” and cannot be registered as trade marks, unless they have become distinctive through use.

An example of a generic mark would be “gramophone” (for gramophones).

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