How Distinctive is your Trade Mark?
When it comes to protecting your brand, taking the necessary steps to register your trade mark is a no-brainer (https://www.that.legal/blog/3-key-reasons-to-register-your-trade-mark).
In addition to – or, perhaps even before – thinking about the specification of goods/services to be protected under your trade mark registration (https://www.that.legal/blog/2021/7/5/tiger-beer-tiger-balm-tiger-airways-and-the-winter-soldier), a key consideration is the distinctiveness of your trade mark.
What is distinctiveness?
Under Section 7(1)(b) of the Trade Marks Act, a mark shall not be registered if it is devoid of any distinctive character. An exception to Section 7(1)(b) is where the trade mark has acquired a distinctive character as a result of the use made of it.
The distinctiveness of a trade mark, whether inherent or acquired through use, is therefore crucial to securing registration.
An essential function of a trade mark is to enable a trader to distinguish his goods or services from those of other traders in the marketplace. To serve this function, a trade mark must be distinctive, as opposed to being generic or merely descriptive of the goods or services sought to be protected under the trade mark.
That the concept of distinctiveness may be difficult to grasp could lie in the fact that there is no single “correct” answer when it comes to questions on trade mark distinctiveness. Every trade mark is different and is judged on its own merits. There is also always some subjective element involved in the interpretation of each trade mark, and whether it would be perceived as a sign having trade mark meaning.
Added to that is the idea that distinctiveness exists on a spectrum – some marks are “stronger” or “weaker” than others. The relative “strength” of a trade mark, when used in relation to the goods/services of interest, will have a direct bearing on its performance in the market and on its scope of legal protection.
The distinctiveness spectrum includes the following types of marks, which range from possessing the highest to lowest levels of distinctiveness:
1. Inherently distinctive marks
On the highest end of the spectrum are trade marks that will be understood by the public as bearing a trade mark meaning, even if they have not yet been used or promoted to the public. These marks are generally afforded the broadest scope of protection against third-party use. Classic examples are trade marks which comprise made-up words, for example, “KODAK”, “ROLEX’, “XEROX”.
Other inherently distinctive marks include arbitrary marks which comprise word(s) with dictionary meanings but have no relation whatsoever to the goods or services on which it is used. For example, “Apple” for computers, “Camel” for cigarettes, “KOI” for bubble tea.
Suggestive marks hint at the nature or attributes of the goods or services without actually describing the goods or services themselves. Some imagination is usually required to draw the connection between the trade mark and the goods or services. Such marks are also considered inherently distinctive, albeit not on the highest end of the spectrum.
2. Non-inherently distinctive marks
A mark that merely describes the function, quality, nature, kind, origin, or other characteristics of a product or service will not be considered inherently distinctive. One example would be the mark “LOVE” for a jewellery business, which indicates the intended purpose of jewellery – a tangible way to express love through gifting loved ones. Marks that comprise laudatory terms such as “best” or “top” are also generally not registrable.
However, a descriptive word (or words) may still be protectable as a trade mark if it has acquired distinctiveness. In other words, a descriptive word or phrase, by virtue of having been substantially used as a trade mark before the application for registration, may, in addition to having the primary meaning that is descriptive of the goods/services, come to function as a sign associated with a single source of origin for those goods/services.
3. Generic words
On the lowest end of the spectrum are generic words which are recognised as the common names of a particular product or service. Think “Apple” for a brand that sells apples. Such words can never be registered as trade marks for the products or services they designate.
Conclusion – the correlation between distinctiveness of a trade mark and its relative “strength”
If your trade mark is an invented word and is therefore situated at the highest end of the spectrum, securing registration would be easy. Conversely, if your trade mark is a generic word without any distinctive elements, there is almost no chance of registration.
However, the lines become blurred when your trade mark falls somewhere between the middle (suggestive mark) to low (descriptive mark) end of the spectrum. This is where the analysis can be quite complex and subjective. This is also where we, as trade mark specialists, can assist you in securing registration, whether through arguments that your mark should be regarded as inherently distinctive, or that your mark has acquired distinctiveness through use.
If you have any questions, or simply want to know more about how to protect your brand, feel free to drop us an email at ask@that.legal. We are more than happy to help. #LetsTalkAboutYourChallenge
This post does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of That.Legal LLC accepts or assumes responsibility, or has any liability, to any person in respect of this post.