Can I register this as a trade mark?
Introduction
A recent trade mark appeal case has once again highlighted the fact that every day, ordinary descriptive words and expressions cannot be registered easily as UK or Community trade marks. The case is a helpful reminder that when traders are deciding what brand names to use for their goods and services they need to consider whether they will be able to get trade mark registrations for those brand names - and thus to be able to prevent other traders from using those brand names for their goods and services.
What is a registered trade mark?
Registered trade marks are essentially negative, monopoly rights. They prevent another trader from being able to use the same trade mark in relation to goods or services which are identical to those for which it is registered. They can also stop another trader from using either the same or a similar trade mark in relation to similar or identical goods or services, if such use is likely to lead to confusion. In some circumstances, if the trade mark has enough built up reputation, it can also be used to prevent the use of the same or a similar trade mark in relation to non-similar goods or services.
However, a trade mark is also a positive asset. A trade mark gives assurance and tells the world that goods or services bearing the trade mark originate from the owner of the trade mark and will therefore be made or provided to a certain quality and standard. A trade mark enables a consumer to identify goods or services as originating from a particular business. It is a 'badge of origin'. A trade mark enables a consumer to repeat their purchases with confidence, by recognising the goods or services of a particular trader.
Why register a trade mark?
By registering your trade mark you are able to tell the world at large of your legal rights in the trade mark. Registration also helps to raise awareness of your trade mark.
If you do not register your trade mark it can be much more difficult to prevent others from using your trade mark, or something confusingly similar, unless your mark becomes well-known amongst the relevant public and trade.
Also, trade mark registers are open to public inspection. This enables traders to check to see if a trade mark they plan to use is owned by someone else and 'warns them off'.
What can you register as a trade mark?
A trade mark can consist of, inter alia, a word or words, letters, numerals, a logo, a device, a musical tune, a colour or colours, the shape of goods or their packaging, or a combination of any of these.
The most common trade marks are words and logos.
What can't you register as a trade mark?
There are many things you cannot register as a UK or Community trade mark.
In particular, you cannot register a descriptive term or expression and you cannot register a non-distinctive sign. A sign cannot be registered as a trade mark unless it can distinguish one trader's goods or services from those of other businesses.
In basic terms, unless a consumer is able to identify your goods or services by looking out for and recognising your unique and distinctive trade mark, he or she will find it difficult to purchase your goods or services on a repeat basis. If your mark is a descriptive term or expression, or is otherwise non-distinctive, it will be 'origin neutral' and will not enable a consumer to identify your goods or services as originating from you (and thus cannot be registered as a trade mark), unless through use it has become distinctive of your goods or services (i.e. through use you have 'educated' the public that your descriptive term or expression, or your otherwise non-distinctive sign, is your trade mark and thus it has adopted a secondary meaning as a 'badge of origin' and operates in practice as your trade mark).
The facts of the case in issue
In the case in issue, a company tried to register the sign 'STRATEGIC REAL ESTATE ADVISORS' as a UK trade mark for, inter alia, real estate affairs and the provision of information in relation to real estate affairs.
At first instance, the application was rejected, on the basis that the sign contained a descriptive expression and was a non-distinctive sign. The trade mark could not distinguish the services of the applicant from those of other businesses. The applicant appealed the decision.
Unsurprisingly, the appeal was unsuccessful. The sign was held to be "wholly descriptive of the activity of providing goods or services of the kind specified, by real estate advisors who pride themselves on having the ability to act strategically".
Further, the use of the sign to date had not been sufficient to educate the relevant public that the descriptive expression was the applicant's trade mark and thus had not adopted a secondary meaning as a 'badge of origin'.
Conclusion
When traders are deciding what brand names to use for their goods and services they need to consider whether they will be able to get trade mark registrations for those brand names - and thus to be able to prevent other traders from using those brand names for their goods and services.
This case reminds us that every day, ordinary descriptive words and expressions cannot be registered easily as UK or Community trade marks.
Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
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