Descriptive trade marks - avoid them!
Deciding on a brand name that gives an indication as to what your services and/or products provide is likely to give your customers an indication of what your business does, right?
Unfortunately, this does not apply when it comes to trade mark registration. This is because marks that are wholly descriptive of the goods and/or services will not be deemed able to function as a trade mark in accordance to section 3(1) of the Trade Marks Act 1994 .
The reasoning behind this is to avoid marks from having a monopoly over a word. For example, if ‘ice cream store’ was to be trade marked by one individual, this would prevent anyone else from being able to use the word ‘ice cream’ as a part of their business name.
As such, the first thing a trade mark examiner considers when looking at an application is whether the proposed mark is wholly descriptive of its goods/and or services under what is known as the ‘Absolute Grounds for Refusal’. If an examiner deems a mark to be descriptive, the application will be refused and your fees will not be refunded.
So how can you avoid chosing a descriptive trade mark?
Firstly, the proposed mark should be distinctive and capable of being distinguished among other registered trade marks. Secondly, the mark should not enable the applicant from claiming a monopoly right over a generic word and/or phrase.
As such, it is of vital importance that when considering to register your brand name as a trade mark, you are aware that the distinctiveness element is key. Without it, your trade mark application may be refused and your fees will not be refunded.
If you are unsure as to whether your business name is descriptive, here at the Trademarkroom we offer both a free and advanced trade mark search service which would give you an indication as to the likelihood of an examiner passing the mark under absolute grounds.
If you have any questions regarding trademarks or the search service, please contact the Trademark room today where we would be happy to assist you!