What makes a ‘good’ trade mark?

Coca-Cola, Apple, Netflix, Google. Brands surround us. They’re everywhere and they’ve become part of our everyday vocabulary. This means that finding an ideal trade mark for your brand can be tricky. Does it fit with your image? Does it work with your marketing? Can it be protected? Given the value that a good brand can add to your business, protecting yours from others can be key to success. So if you’re thinking about protecting your brand with a registered trade mark, here’s a quick guide to four factors that influence whether a mark is ‘good’.

Distinctiveness matters

The key to brand success is ensuring that your brand identifies you — not just the products you sell. So while APPLE could not be trade marked for apples (as this would just be descriptive) it’s a fantastic trade mark for computers, mobiles and music services. This is because it doesn’t tell you what the product is, just who makes it. If any of us now see APPLE on a product, we know exactly who it comes from.

If you’ve chosen a brand name which is just a description of the goods or services you sell, it doesn’t mean that you won’t be able to protect it. However, it does tend to make things a bit more difficult. Our client, White Herron Limited, was able to get a registration for BRITISH CASSIS for cassis, because it was able to show that its trade mark had ‘acquired distinctiveness’. This means that, when customers saw BRITISH CASSIS, it told them that the product only came from one source, rather than where the product was produced. To do this, we had to put together evidence of use, goodwill and reputation including sales information, marketing materials and support from others in the industry.

It’s also important to remember that, just because a name is being used for a particular range of products or services, this doesn’t mean that it can’t be used for other things. Take the trade mark POLO, for example. It’s owned by different companies for cars, clothing and sweets with a hole in the middle. As long as no-one would think that the products on which you are using your mark come from someone else — if there is no likelihood of confusion — then you can use the mark. However, this can be a real minefield and is one area where expert advice should be sought.

Avoid the offensive and think about the future

Clearly, you can’t protect something which people would find offensive, or which could even be illegal. In the UK, the high-street retailer French Connection tried to register FCUK, but it was initially rejected because the courts said it would (for obvious reasons) just be seen as offensive to a lot of people.

If you’re thinking about expanding overseas, you might also want to consider how your mark might be seen by potential customers in other countries. While SWEAT might be great as the name of a drink in Japan, it might not go down so well in the UK. In Spanish, ‘no va’ means ‘it doesn’t go’ — which forced a rethink of the naming strategy for Chevrolet’s NOVA car model.

Becoming the description for the product is not a good thing

While brand recognition is great (who wouldn’t want to be as recognised as Facebook, Mercedes or Nike) you do not want your brand, which identifies you, from simply becoming the terms that everyone uses to describe a type of product. If your brand becomes a generic term that everyone uses, you’ll lose all of the value in your brand. This is why companies, especially market leaders, go to such lengths to prevent this from happening, as can be seen in this lively example from Velcro.

It’s your business, so using your personal name or the name of the company which you set up can seem the obvious and easy choice for your brand and the thing to get registered. However, with an eye to the future, you might want to think about what happens if you sell the business in the future and the impact this might have on you.

When Jo Malone (the well-known perfumer) sold her company to Estee Lauder, she had to agree to trade as ‘Jo Loves’. Pity too the lawyer for Rolls Royce, who originally threw the baby out with the bath water when the company was split up in the 1970’s. With all of its trade mark registrations, which covered both car and aero engines, being transferred to the aero engine company, the car company had no protection for its mark — and worse still, it was technically infringing. A settlement was eventually reached, but you can guarantee that it didn’t come cheaply…

Domain names are important, but remember — they don’t give you rights

Securing the domain name for your brand can be central to its development and success, given the importance of online marketing and search engine optimisation. However, while a domain name cannot be registered if the owner has no legitimate interest in it, or if it is being used in bad faith, there are numerous instances of conflicting but legitimate interests in the same domain name.

This is largely due to the fact that, unlike trade marks, they are not limited to specific goods or services. In 1999, the BBC spent over £200k on the domain name bbc.com, buying it from another legitimate owner, Boston Business Computing. In 2001, a Mr Anand Ramnath Mani successfully defended his claim to the domain name armani.com, as he was able to show he was not using it in bad faith. While this domain name now belongs to the Italian fashion house, they no doubt had to pay dearly for the privilege.

It’s also a common misconception that registering a domain name gives you some protection for your brand. While domain names should be a key part of your brand development strategy, they should not be seen as an alternative for registered trade mark protection.

All of these factors can influence what makes a ‘good’ trade mark and how likely it is that your trade mark can be registered. If you need expert support and advice, get in touch.