Coming up with a trade mark that is registrable can be difficult. Even then, while you might be able to register your trade mark, not all trade marks are equally valuable. Even though you might be seeking protection of something you might consider valuable and that you use as a unique identifier of your business, you need to consider whether your customers and competitors regard it in the same way. If your trade mark will not have any deterrent effect, or if it will be difficult to enforce, you should consider whether your trade mark is actually the trade mark you should be registering and whether it is valuable to your business.

Why are some trade marks better than others?

A good quality trade mark registration will:

  • have the effect of deterring others from using the trade mark;
  • be easy and inexpensive to enforce; and
  • increase the value of your business.

A trade mark that, while registered, has little deterrent effect or is difficult to enforce will not be as valuable as one that is. A high quality trade mark registration, by comparison, will help to avoid legal disputes in the first place and help to resolve any dispute as quickly and cheaply as possible.

Good Quality Trade Marks

Made up words. These words have no meaning or connection prior to their creation so are the strongest type of trade mark. Famous examples include KODAK, EXXON, XEROX.

These have the strongest protection, as it is extremely unlikely that other traders would need to use those marks in relation to their own goods or services. Registration of these trade marks has the maximum deterrent effect and are the cheapest to enforce.

Arbitrary marks. Marks that have no connection to the goods or services they are advertising. Famous examples include APPLE for computers, DOVE for soap (or for chocolate), or MONGOOSE for bicycles.

Suggestive marks. These are marks that merely ‘suggest’ a quality or feature of the trade mark. Famous examples include AIRBUS for aeroplanes or MICROSOFT, for software.

Poor Quality Trade Marks

Descriptive or generic trade marks. These are difficult to register and to enforce because other traders will have a legitimate need to use those words in relation to their own goods or services. Examples include LIFT SHOP for elevators, or QUALITY HOMES for house construction.

These trade marks are difficult to register, and, even if registered, difficult to enforce. This is because other traders would have a legitimate need to use the same words to describe their own goods or services.

A descriptive trade mark may, through use, become distinctive, for example SUBWAY’s trade mark EAT FRESH.

‘Busy’ or complicated graphical trade marks. A trade mark that contains many visual elements, while registrable, may not be valuable. Examples include an entire label or package design, or a complicated map or diagram.

A trade mark of this type, while registrable, may have no deterrent effect against use of particular elements contained within it. It will also be difficult to enforce against someone unless they are using the entire mark, or a substantial part of it.

If you have a large or complicated graphic, it is likely that it is protected by copyright.

Long slogans or phrases. The longer a phrase, the narrower the range of protection it will be afforded, and the lower the value of the registration. As with ‘busy’ graphical trade marks, a competitor using only some parts of a lengthy slogan may not be infringing the entire slogan. For this reason, it can be difficult to enforce marks of this type.

Dos and Don’ts for selecting a high quality trade mark

Do

  • Make up a word, if you can, or choose words unrelated to your business.
  • Keep slogans short, catchy, and distinctive.
  • Identify the distinctive element or elements of your unique label, diagram, or other graphical design. Ask: “How will my customers identify my products?”

Don’t

  • Choose a trade mark that could be confused with another mark in the same or related industries.
  • Choose a trade mark that describes your goods or services.
  • Try to register long slogans or busy graphical signs.

Conclusion

Not all trade marks are equally valuable. It’s important to make sure your trade mark is enforceable, and serves the purpose of protecting your brand. A strong, enforceable, recognisable trade mark is often the most valuable asset a business has.

Of course, these tips are guidelines, and each situation is different. If you’re unsure of the best approach it’s best to speak to an appropriately qualified professional, such as a trade marks lawyer or trade marks attorney.

Daniel Smith

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