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Choosing the right trade mark – Allister McManus, ipconsult

One of the most important areas of trade mark law for any business is choosing the right name for the business and its goods and services.

This is all well and good, but it can be difficult for a business to progress to this stage if it does not have a distinctive trade mark.

It is also important to remember that a trade mark registration can be renewed indefinitely, so the ‘distinctive’ requirement is an important hurdle. Choosing the right trade mark should be done carefully, with as much research as possible.

The power of a trade mark to act as a distinguishing sign, guaranteeing identity and quality of goods or services, is important to the owner. This is an essential function of a trade mark and is often reflected in the value associated with brands, some of which have become lucrative assets.

One of the biggest disappointments for clients is when we have to tell them that their trade mark is not distinctive and so we may struggle to get it registered. There are many reasons for this, but the major culprit is that trade marks which feature words or logos that simply describe what a business does, what the product is or a characteristic of the product (such as its quality) are not distinctive.

So, a trader cannot protect SOAP for soap, or COFFEE SHOP for coffee shops!

Balancing commercial desires, as well as meeting the legal requirements, can be an intricate process. So a name that appears great from a selling or marketing perspective is not always going to give exclusive legal rights to a product or service. Businesses want to use descriptive names so that the public can understand what their product or service is, but the downside is that such descriptive names are often terms that others may also be entitled to use.

Great examples of trade marks, which vaguely refer to the product but are still distinctive include: FLASH or Mr MUSCLE for domestic cleaners; UTTERLY BUTTERLY for margarine and butter. However, trade marks that do not refer at all to the products or are invented can also be powerful distinctive badges of origin for a trader. Good examples include LOTUS for sports cars, and KODAK for cameras.

I hope the points in this article will be useful for businesses looking to protect and maintain their trade marks. The area can be very complex, and professional advice should always be sought.

For more information,  email me.

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