Intellectual Property: Trademarks - Guides
Trademarks
5. Distinctiveness
Last updated: 22 Sep 2015
- Although almost anything can be registered as a trade mark to succeed it must be distinctive.
- The concept of distinctiveness is essential to trade mark law. It determines whether you can register your trade mark and the extent to which you can enforce your trade mark against third party use.
- The main requirement for registration is that the trade mark should be capable of distinguishing goods or services. Marks which are directly descriptive of the goods and services or which comprise common words such as ‘extra’ may be difficult to register. The same applies to commonly used images such as logos of cats or dogs for pet food. However if it can be shown that the trade mark has been used to such an extent that it does specifically distinguish your goods or services then registration may be obtained.
- The Trade Marks Office resists granting registered protection for a sign that other traders may legitimately wish to use in connection with their goods or services.
- There is a spectrum of distinctiveness from invented words which are the strongest word marks to generic terms that are weak and impossible or at least very difficult to protect. From strongest to weakest the spectrum is:
- invented marks which have no meaning and certainly no meaning in relation to the relevant goods or services for example ‘Kodak’ and ‘Viagra’;
- arbitrary marks which are known words that have no meaning in relation to the relevant goods or services for example ‘Kindle’ for electronic readers;
- suggestive marks which are known words which may convey a feeling or suggest a meaning but which do not directly describe the goods or services for example ‘eBAY’ for an online marketplace;
- descriptive marks which are words that describe the goods or services or an element of the goods of services. These marks can be difficult to register and enforce unless the mark has acquired a secondary meaning through extensive and consistent use for example ‘Payless Shoes’ for shoe retailing or ‘Best Buy’ for electronic goods; and
- generic terms which are words that are the accepted and recognized description of a class of goods or services for example ‘Hard Drive’ for IT hardware or ‘Sleep Well’ for a brand of bedding.
- Distinctive trade marks will typically operate very well as brands as they stand out in the market and are easily recalled by consumers. However increasingly there is tension between what works from a legal perspective and a marketing perspective. In particular for search engine optimisation a descriptive name can work very well. However these names will be given only the most narrow protection under trade mark law if they are able to be registered at all.
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