Many businesses have difficulty choosing a brand that appropriately identifies what they do while still being something that can be protected. It is often difficult to register trademarks that are descriptive, and even if they are registered issues arise when trying to enforce them.[1] This is because trademarks that are descriptive are generally not sufficiently capable of distinguishing the goods or services from those of other traders.

So what sorts of brands are easier to protect? When selecting a brand, consider following:

Made up, or Invented Words

Consider some famous brands that have made up words in their names. The classic example is KODAK. George Eastman, the founder of the Eastman Kodak Company, stated, when selecting his brand “I knew a trade name must be short, vigorous, incapable of being misspelled to an extent that will destroy its identity, and, in order to satisfy the trademark laws, it must mean nothing”.[2]

As an invented word, KODAK has no dictionary meaning. Adopting a similar approach, that is, making up your own word for your brand, is the best strategy because it offers the broadest and most easily enforced form of protection. As KODAK shows, it can also be memorable, sound good, and be a good basis for building a strong reputation.

Unrelated words

Another approach to selecting a brand is to choose words that are completely unrelated to your business. Consider APPLE for computers or MONGOOSE for bicycles. Neither of these words convey anything to do with the products with which they are associated, but both are memorable, instantly recognisable, and importantly, protectable brands. Bear in mind, however, that registering a trademark containing commonly used words would not enable you to stop others from using those words to describe other goods/services.

Unique person names

Do you have a unique name? The commonness of a surname will be used as an indicator to determine whether a trademark is sufficiently capable of distinguishing the goods or services. As a general rule IP Australia considers a name that occurs more than 750 times sufficiently common to warrant a ground for rejection of a trademark application. However, if the goods or services are sufficiently specialised (for example helicopter design services), the threshold of ‘commonness’ may be higher.

Things to avoid

Where possible, it’s best to avoid using a name that describes the goods or services being sold. Some examples are below:

Suggestive names

This category includes names that are suggestive of the goods or services being sold, while not being entirely descriptive. While it’s not always the case that these marks will be refused, you’ll need to consider whether other traders selling similar products are likely to want to use those words in that combination to sell their own products.[3]

Merely Descriptive Marks

Descriptive words may be statements about the quality of the products (e.g. FRESH DONUTS), their location or geographic origin (e.g. SYDNEY LAWYERS), or just generic terms used for those products (e.g. CLOCK for timekeeping devices). In cases where your trademark does nothing more than describe your products, it may be difficult to register. As with suggestive names, think about whether your competitors are likely to want to (innocently) use those words to describe their own goods or services. If they are, in most cases you would need to provide substantial evidence of use (or intended use) demonstrating that when people think of those words, they think of your business and your business alone, and the more likely people are to want to use those words the more evidence will be required.[4] Even then, your protection may be limited to the region in which you have a reputation.[5]

Conclusion

Coming up with a brand that is both marketable and protectable is challenging. Even if you do come up with something that sounds good, is catchy, clear, and works well on the Internet, if you can’t protect it, you may run into problems in the future. By considering the issues discussed in this article, you’ll hopefully be on track to ensuring your brand is better protected for the long term.

For more guidance on protecting your trademark, it may be worth speaking with an IP lawyer at LegalVision.

Cases:

Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75.

https://jade.barnet.com.au/Jade.html#!article=336892

Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511.

http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/HCA/1964/55.html

Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8.

http://www.austlii.edu.au/au/cases/cth/FCAFC/2013/110.html

Re Application By The College of Law Pty Ltd (1999) 47 IPR 404.

Other Sources:

IP Australia Trade Marks Examiner’s manual: http://www.ipaustralia.gov.au/pdfs/trademarkmanual/trade_marks_examiners_manual.htm

International Trademark Association, Fact Sheets: Selecting and Registering a Trademark http://www.inta.org/TrademarkBasics/FactSheets/Pages/ConsiderationsSelectingTrademarkFactSheet.aspx

[1] For example, see Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75.

[2] Helm, Merry (October 11, 2003). “Kodak from Nodak-David Houston”. Dakota datebook. Prairie public.

[3] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511.

[4] IP Australia, Trade Marks Office Manual of Practice & Procedure, Part 23, 4 “Examining evidence – general” (1 November 2013).

[5] For example, see Re Application By The College of Law Pty Ltd (1999) 47 IPR 404.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Daniel Smith

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