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Top Tips from HGF Limited

Top ten tips for choosing a distinctive trade mark

14th May 2019, 9:15 am

Trade mark registrations are hugely valuable business tools as they provide you with the exclusive rights to a name or logo and can last forever if renewed every ten years. But trade mark registries are selective as to what is eligible for registration and descriptive or generic names will be refused protection.

Follow these top tips to ensure your brand name sets you apart from the crowd and is eligible for protection as a trade mark.

1. Invent a word

The strongest and most distinctive brand names (and those easiest to register as trade marks) are entirely made-up words that have no meaning in any language. By adopting a unique word as your brand name, you ensure that it can only ever be associated with you.

Some of the world’s largest brands have invented names – think PEPSI, GOOGLE and ADIDAS. Upon seeing ‘ADIDAS’, you immediately think of the athleisure brand and no other meaning or connotation comes to mind; a good sign of a distinctive trade mark.

2. Think outside the box

The distinctiveness of a trade mark is assessed in relation to the goods and services that will be provided under the mark. Rather than creating an entirely new word, you could opt for a name that is simply unrelated to your products, like AMAZON for retail services. Another classic example is APPLE, which would be non-distinctive if used by a supplier of fruit but is meaningless and highly distinctive in relation to electronic products.

3. Combine words

Another option would be to combine words to create a new word or acronym. ASOS for example, now a distinctive brand name in its own right, is an acronym for ‘As Seen On Screen’, although many customers today are unaware of its origin. MICROSOFT, another familiar brand name, is a combination of the words ‘microcomputer’ and ‘software.’

4. Avoid being too literal

If your brand name provides information on what your product or service is, its characteristics or its purpose, it is likely to be too descriptive to qualify for trade mark protection and may be less memorable for consumers.

Examples of descriptive marks would be PRETTY DRESSES in relation to clothing, HEALTHY OPTION for food products or MUSCLE BUILDER for a protein shake.

Words of praise or superlatives like ‘super’, ‘deluxe’ or ‘pro’ are also descriptive, as are place names and common surnames. It would be difficult to register these terms as trade marks or stop others using them. Protectable trade marks can allude to the products and services but cannot be directly descriptive.

5. Avoid generic words in your sector

Generic names are commonly used terms for your products and services. For example ‘salon’ is non-distinctive in relation to hairdressing services and should be combined with other, more distinctive elements to create a trade mark.

6. Suggestive trade marks are different

Suggestive trade marks only hint at what your products or services might be and make for stronger brand names. If some thought or imagination is necessary to make the connection, it is likely to fall on the distinctive side of the line. Examples of suggestive trade marks include HABITAT for homeware and NETFLIX for the online film subscription service.

7. Use slogans in combination with a core brand name

Slogans can be an important part of your overall branding, but from a trade mark perspective they are usually seen as too promotional in nature to be distinctive. Essentially, consumers are used to encountering slogans in advertising and are unlikely to associate them with one particular brand.

We recommend opting for a short, catchy and unusual slogan that will easily allow consumers to identify it with your brand.

8. Apply for a stylised logo instead

Anything capable of being represented in a clear way can be registered as a trade mark – even colours, shapes and smells. Most people choose to stick to words or logos. If your brand name alone is not distinctive enough for trade mark protection, consider creating a stylised version of the name plus a logo element. You may have one already. These additional design features are often sufficient to make the mark distinctive overall.

9. If all else fails, use and try again

Perhaps you have been advised that the trade mark you are set on is non-distinctive, or a trade mark registry has issued a refusal. There is a workaround for non-distinctive trade marks if you can prove that you have used the mark extensively over a few years and consumers have come to associate the mark with you alone. It may be worth filing another application when you can provide evidence of such use. This is a common approach taken by brands wishing to obtain trade mark protection for slogans.

10. Police the use of your trade mark from day one

Trade marks can lose distinctiveness over time and become generic if they start to be used as a common product descriptors. Registrations for generic trade marks risk being removed from the register. Keep a company policy on how the trade mark should be used and try not to abbreviate or otherwise vary your use of the mark.

ESCALATOR was once a distinctive trade mark but became so ubiquitous that it became known as the name for the product itself, a moving staircase, rather than the brand behind the product.

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