WHAT IS A TRADE MARK?

Key factors to consider when choosing a new brand or a brand for a new product or service.

By Joel Barry

A trade mark must be capable of (a) being represented in the register in a manner which enables the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and (b) distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.

IN ORDER TO DISTINGUISH IT MUST BE DISTINCTIVE:

There are two ways a trade mark can be distinctive. The first is at the outset and the second is by educating the public through sustained use. As a side note distinctiveness can also be lost.

Distinctiveness (or lack of it) turns entirely on the context. APPLE is not distinctive for an orchard but is for a phone.

People sometimes talk of a spectrum of distinctiveness, particularly in the US and while it is not a recognised legal principle. While in the UK we do not have the same approach, it is still a good guide:

• Generic: a regular word for the goods/services e.g. BRITISH GAS.
• Descriptive: describes the goods/services NOW TV
• Suggestive: requires thought or imagination to arrive at the meaning e.g. BRANDSMITHS.
• Arbitrary: have no reference to the goods/services, e.g. APPLE.
• Fanciful: an invented name e.g. XEROX

However, please note which category you put at in is a matter of appreciation.

For more information about trade marks, contact:

joel@ceclegal.co.uk