BY Manisha Bugwandeen-Doorasamy
intellectual property (IP)
Trade marks: if there’s no room at the inn, isn’t it time for a different approach?
Brand owners know it. Brand creation firms know it. Trade mark professionals know it. So isn’t it time we started talking about it? Better still, started doing something about it? What exactly is it? It is the simple but uncomfortable truth that the trade mark registers of the world are hopelessly overcrowded. Just like so many of the countries, the cities, the tourist attractions...
So what has brought this on? Well, it was a recent article in World Trademark Review entitled Dig Deep – branding expert reveals challenges of finding new brand names in a crowded trademark market. The article takes the form of an interview with a branding expert, Alexandra Watkins, the chief executive of a brand creation company called Eat My Words.
There’s talk in the article of the “challenges that companies face when identifying brand names in a world with millions of new trade mark applications filed annually” and there are lots of numbers, numbers that are perhaps not always as clear as they might be, but are worrying nonetheless. For example:
• 81% of common words are registered trade marks;
• over six million companies and more than 100 000 products are launched every year;
• there are more than one million registered trade marks in the USA simply in the business services class, class 35 – bear in mind that there are 45 classes in all, with classes 1-34 covering goods and classes 35-45 covering services;
• over nine million trade mark applications were filed throughout the world in 2017, a 30% increase on the year before;
• there are three times as many trade mark applications worldwide as there were in 2007.
The solution according to Watkins: “My advice is to dig deep and be prepared to come up with hundreds of names.”
This advice may suit companies that are in the business of creating new brand names. It will probably also suit trade mark professionals, who obviously stand to benefit from the searching and registration work that flows from the creation of multiple brand names. But it certainly doesn’t suit brand owners, especially the smaller ones who can’t afford to go through major clearance exercises, never mind registration programs. And if the brand owners eventually lose interest in (and respect for) the trade mark system, well then, it will all go pear-shaped!
So what should trade mark professionals be thinking and talking about? Here are a few suggestions.
Is the trade mark system we have actually fit for purpose? We have a system that was developed for a very different world, a world in which a small number of companies in what would have been described as “first world” or “developed world” countries, applied their trade marks to goods (services would come later) that were sold in those same countries and perhaps (in very small quantities) in a few of the “third world” or “developing world” countries. Contrast that with the multinational, interconnected, services-oriented, brand-aware, counterfeit-blighted world we live in today!
Are some of the fundamental premises valid? If you consider that there are probably a fairly significant number of trade mark registrations that are older than 100 years, should a trade mark registration actually be something that can be kept in perpetuity simply through the payment of a renewal fee? Should there be more to a trade mark renewal than the payment of a fee? Should proof of use on renewal be a requirement throughout the world? Even more radically, should a trade mark registration simply have a limited duration, like the other IP rights?
Another thought: should it be possible to get trade mark registrations for the very wide specifications that brand owners favour, especially bearing in mind that the trend in trade mark law is to grant trade mark owners ever-wider enforcement rights? Should the scope of protection not be limited rather than broadened? A limitation will surely have the effect of creating greater trade mark availability.
Should we be pushing our clients in different directions? Most companies do insist on word marks, but many of the obvious avenues (like marks starting with a Z) are fast being exhausted. Why limit brand names to English? Come on, South African companies, you have a further 10 official languages to choose from!
And how about trying to break the dependency on words, especially in light of the fact that consumers now interact with brands in ways that are far removed from the ways that they interacted with brands in the past? There are so many other types of marks out there. There are logos and colours and shapes and sounds and motions and smells...!
I could say far more, but that would clearly be inappropriate because this article is all about overcrowding and lack of space!
executive | IP
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