Persuading clients to adopt distinctive trade marks is no easy task. For reasons that are varied and complex, many business people, and particularly marketers, are firmly convinced that the best way to brand a product is to:
- describe what the product does
- hint at what it does
- tell consumers what part of the world it comes from
- tell consumers how brilliant it is
The fundamental requirement for trade mark protection through registration is, of course, distinctiveness and this excludes many of the names that companies opt to protect. Yet, it’s also true that companies often manage to get registrations for trade marks that are weak. In some cases, this is because the trade mark owner is able to show that the trade mark has been used extensively, and that it has therefore become distinctive, known as “acquired distinctiveness” in trade mark parlance. In other cases, it’s because the trade mark owner has added other features, such as design elements, to the non-distinctive word. And, in some cases, it’s simply down to slackness on the part of the trade mark official who examined the application.
But, is it worth getting excited about a registration for a weak trade mark? The main purpose of getting a trade mark registration is to get the exclusivity that it offers; in other words, the ability to stop others registering similar trade marks, and, perhaps more importantly, the ability to stop others using similar trade marks. But one is unlikely to achieve this with a registration for a weak trade mark, as these three recent trade mark decisions show all too clearly:
In Australia, a company applied to register the trade mark Sake No Hana in class 43 for restaurant services. This application was opposed by the owner of an earlier registration for the trade mark Sake & Logo, also in class 43 for restaurant services, who claimed that confusion was likely. The opponent argued that consumers seeing Sake No Hana might assume that it was a brand extension of Sake. They also argued that consumers seeing Sake No Hana might abbreviate it to Sake.
But the trade mark registry disagreed. It ruled that because “sake” is a non-distinctive word that refers to a rice wine, which is apparently well known in Australia, the rights were weak. It rejected the argument that Sake No Hana would be seen as a brand extension of Sake. It also rejected the argument that Sake No Hana would be abbreviated to the descriptive word Sake. If anything, the registry felt it would be abbreviated to No Hana. So the owner of Sake & Logo has to accept that there is also a registration for Sake No Hana for the same services.
There have been long-running opposition proceedings in Canada about trade marks that incorporate the word “pinnacle”. A drinks company applied to register the trade mark Domaine Pinnacle together with a logo, and this application was opposed on the basis of registrations for the trade marks Pinnacle, Pinnacles and Pinnacle together with a different logo. This matter has gone all the way to the Federal Court of Appeal, which found that the trade marks would not be confused because the common feature, the word pinnacle, is not very distinctive. In cases such as these, the design features are all-important.
Recently well-known sports goods retailer Sports Direct, which has trade mark registrations for its trade mark in class 28 for sporting goods, opposed applications to register the trade mark Fitness Direct & Logo in class 28 for sporting goods. This opposition was rejected and the trade mark registry ruled that the word “direct” is the common feature and has limited distinctiveness due to its obvious reference to easy access. The trade marks were held to be not confusingly similar.
In light of the above, it’s advisable to choose trade marks that are inherently distinctive, and therefore easy to register and enforce. That might mean a made-up and meaningless word like Google or a combination or portmanteau word like Gautrain or an existing word that’s used out of its ordinary context – think Apple or Sahara for computers. It might even mean a word that alludes to the nature or quality of the product, but does so in a way that is interesting or unusual.
It really does make sense to get trade mark advice as early as possible – at the brand creation stage.
Reviewed by Ilse du Plessis, director in ENSafrica's IP department.
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