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Why being too descriptive when choosing a trade mark is bad?

Creating a descriptive trade mark

You can’t register a trade mark which is too descriptive. According to UK and EU law, descriptive marks are “trade marks which consist exclusively of signs or indications, which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical, origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;” Confused? A couple of examples may help. So “Food land” for a supermarket, “Cold and creamy” for ice creams or “Seven days” for newspapers would be seen as being too descriptive.

Unfortunately it is a common mistake by small companies and new start-ups when choosing their trading name. Descriptive names come readily to mind for the simple reason that a name that describes what you do seems to make perfect sense. At the time it appears a great idea as consumers would have no doubt what you do. You may even have made this mistake yourself. However when the time comes to register your trade mark the Intellectual Property Office will most likely object to their registration.

Why descriptive marks cannot be registered

You need to think about that the definition itself of a trade mark, its function. The Trade Mark law says that it is a sign capable of graphical representation that distinguishes the goods and services of your business from those of other businesses. This means that its main purpose is to differentiate your business from another business especially in the same area of trade. It helps consumers to identify the source/origin of the goods and services offered, in other words from which company it’s coming. Think about the examples given earlier, how would they fulfil this condition? It is pretty clear that if I say “food land”, the average consumer would think about a supermarket or a market that sells food. It would probably not think of your company as it would be indistinguishable from others. It would also be unfair and against competition law to prevent other companies from using those words when they describe particular goods or services and make it difficult for them to promote their products.

Would it be possible to overcome this decision?

In some circumstances, there’s still hope! In most countries, registration may still happen if you think that your trade mark has acquired a secondary meaning for the consumers. You will have to prove that your trade mark has acquired distinctiveness through use by demonstrating to the examiner that the consumers in the marketplace associate your mark with your business, that they can identify that the products you sell or the services you provide come from your company. IPOs usually review all your evidence and if you have been able to demonstrate that your trade mark has acquired distinctiveness through use as a matter of fact, then your trade mark application would be accepted and would proceed to publication. Going through this process is not easy and generally requires the help of trademark attorneys such as ourselves.

How to avoid this situation

Make sure your trade mark distinguishes your company from another, and that it has a distinctive character. Make it something different, something out of the ordinary! The best would be something so original that when you see it you don’t have to think twice and immediately recognise your company, what you sell, the quality of your product etc…. the more original your trade mark is, the stronger it will be. Think about Rolex and their nice luxurious Swiss watches, the quality of them, the beautiful designs… or Nokia and their modern cameras or smartphones. Be innovative and imaginative!