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How To Select A Good Trade Mark

A registered trade mark can be one of the most valuable assets a business can own.

Registering a trade mark gives the business a legally enforceable right to use that trade mark and to take action against infringers. The business also has the right to sell that trade mark or licence others to use it. And when a particular trade mark is underpinned by a strong marketing and commercial strategy, it becomes a powerful identifier for a product, service or brand, setting it apart from the competition and becoming a valuable tradeable asset.

That’s why making the right choice of trade mark is so important. At the outset it is necessary to understand that, by definition, a trade mark is a ‘sign’ that one trader uses or intends to use that is capable of distinguishing its goods or services from the similar activities of other traders.

Given the above, trade marks will vary in terms of their weaknesses and strengths. For example, a generic or descriptive trade mark is often quite ‘weak’ whereas a trade mark that’s been sufficiently created with the sole purpose of acting as a distinctive ‘sign’ for the trader’s goods or services will be much stronger.

Before you invest any time and effort developing a trade mark, it is crucial to ascertain whether it can actually be registered. A surprising number of businesses invest considerable resources developing what they believe is an original trade mark (which could be anything from a business name, logo, slogan and product packaging to an advertising jingle), only to find that their efforts were in vain because that trade mark has already been registered.

The first step is always to do a comprehensive trade mark search to make sure your business isn’t needlessly wasting time, money and effort.

Let’s first examine the various strength levels of trade marks, starting from the top and then we’ll delve into how to select a strong one.

Sufficiently distinctive trade marks are usually made-up or feature a distinct term that has been chosen and created for the sole purpose of being a trade mark. Typically these will not have any relation to the goods or service that it relates to. Examples include Kodak, Pepsi, Rolex, Exxon and Tim Tams. These marks can also include trade marks that comprise words that already exist, but which have no meaning or affiliation to the goods that they describe. Examples include Apple (computers) and Dominoes (pizza). These sorts of marks are usually the strongest type of trade marks in terms of protection and enforcement.

A Suggestive or Emotive mark is one which alludes to the nature of the goods or service in question, but which doesn’t actually describe them. Examples of suggestive trade marks are Netflix (streaming service) and Jaguar (a car brand). Suggestive trade marks also provide an appropriate level of protection.

A Descriptive mark is one which describes the actual goods or services or which describes the characteristics of those goods or services. Australian recognises that some trade marks have been adapted in some way to help distinguish the goods or services but not sufficiently so and may allow registration on the basis of evidence that the trade mark does or will become distinctive. Even if you are able to register a descriptive mark, they are often still on the weaker side as it can be difficult to enforce the right against another person that may using something similar purely in a descriptive fashion.

In other cases, the trade mark will be found purely descriptive and as such it may be difficult to ever register as the threshold to prove a descriptive term services to indicate the goods originate from one trader only is high. It is difficult to register a trade mark that is purely descriptive. Examples are ‘power boats’ for water vehicles and ‘cold and creamy’ for ice cream.

Generic Terms are terms used to describe a class of goods or services which are accepted and recognised in common usage. Plumbing services, shoe store, computer software and body lotion are examples of generic terms. These sorts of terms cannot be protected as it would be impossible for one trader to demonstrate the generic term is recognised as the distinctive trade mark for its products or services.

Given the above, unless your chosen trade mark falls into the category of sufficiently distinctive or suggestive, it is highly unlikely that it will be accepted for registration at first instance. As noted above, some marks that are to some degree distinctive but also lean toward the descriptive side may be registered if evidence of use supports the capability of the mark acting as the indicator of trade origin in Australia.

Selecting a good trade mark

In choosing a strong trade mark, you should:
• Choose original words that are as distinctive as possible
• Choose words that are likely to stand out, become memorable and create a strong market presence
• Avoid descriptive or generic words – i.e. avoid terms other traders would genuinely seek to use in connection with the same or related goods/services
• Avoid words or phrases that are confusingly similar to a trade mark that already exists in the market place.
• Avoid surnames. Applications for these (even if they are attached to other words eg. Kellys tyres) are unlikely to be successful as they are terms other people with that common surname would genuinely consider using.

Just as it’s crucial to choose a strong trade mark, it’s also crucial to choose the right class of goods and/or services when you’re applying for registration. There are 45 classes from which to choose, but once an application has been formally filed, it is not possible to change the goods and/or services description in any way that expands from the original scope. A whole new application needs to be made.

The field of trade marks is complex and a lack of awareness or errors can be costly on many different fronts. If you need assistance choosing a strong trade mark which avoids confusion or conflict and which sets a strong foundation for establishing a successful brand, we can help.

Mark My Words Trade Mark Services is a highly regarded trade marks attorney firm, providing affordable and reliable assistance and advice on trade mark registration, infringement and opposition matters and many other business issues. Business founder and qualified trade marks attorney, Jacqui Pryor, has over 20 years of experience in the field of trade marks and she has established a strong team of friendly professionals who are passionate about helping businesses get the most from their trade mark assets.

For more information, please contact us 03 8288 1432 or visit our website https://www.mmwtrademarks.com.au/.

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