When you’re choosing a name for a business or a new product, it pays to know the difference between a legally strong brand and a weak one.
There’s a pecking order when it comes to trade mark registrability and protectability. When making branding decisions it’s essential to know the type of marks that sit at the top of this pecking order.
Why it’s important
A legally strong trade mark is one that is easy to register and protect.
Trade mark registration is a powerful thing. It gives the trade mark owner the exclusive right to use the mark in Australia in connection with the registered goods and services. This monopoly can continue indefinitely.
And if infringement occurs, a strong trade mark is one that is easy to protect. A common strategy to defeat infringement allegations is to challenge the validity of the trade mark that is being enforced. Strong marks can withstand such a challenge.
Characteristic of a strong trade mark
In the world of trade mark law, the inherent distinctiveness of a mark is rewarded with a seat at the top of the hierarchy of marks. To test the degree of inherent distinctiveness of a mark, ask yourself this question:
How likely is it for another trader to innocently use the mark with similar goods and services in the ordinary course of business?
The more unlikely, the stronger the mark.
The pecking order
Invented marks sit at the top of the pecking order. These are words such as GOOGLE and KODAK, which have no real or perceived meaning. Because there is zero likelihood of another trader having a legitimate reason to use an invented word, these marks sit pretty at the top of the heap.
Unusual / fanciful marks run neck and neck with invented marks. These are marks which although they have an ordinary meaning, are applied in an unusual or fanciful way. For example, APPLE in relation to computers and CANON in relation to printers.
‘Suggestive’ marks are ones which convey an idea or some information in relation to their goods and services without being directly descriptive. Sara Lee’s LATTECCINO in relation to milk and milk products is suggestive of a cafe latte and cappuccino without being directly descriptive.
A careful balance needs to be achieved to avoid ‘suggestive’ marks tipping over into the descriptive category. Plain laudatory marks, such as DELIVERING EXCELLENCE in relation to vending machines, often fall into the descriptive category and are unlikely to be accepted for registration without evidence of use.
Finally, sitting at the bottom of the hierarchy are descriptive marks. Marks which describe goods or services, such as COMPUTERSERVICES in relation to computer programming and support, should be avoided. They are generally not accepted for registration as other traders will have legitimate reasons to use similar words to describe their goods and services.
To recap
- When brainstorming and selecting a new brand name, remember to assess how legally strong it is
- Ask yourself: “would another trader have legitimate reasons to use my brand name in the ordinary course of business?”
- Think about where your brand sits on the trade mark pecking order – is it at (or close to) the top?
Tags: brand design, branding, strong trade marks
