Trade Marks

5 tips to help you protect a difficult-to-register trade mark

Advice to help businesses who want to use more well known signs based on existing meaning, as trade marks.

Ask a trade mark attorney for an example of a good trade mark, and they will probably say an invented word like ADIDAS or IKEA. But businesses often want to use much less distinctive signs as trade marks, since they can communicate an immediate message to consumers, based on their existing meaning. Businesses also increasingly wish to protect unusual features (such as the shape of a product or its packaging) from imitation by competitors. These kinds of trade marks can be difficult to protect – so what should you do?

1. Register a stylized form of your word, possibly also with a logo

It would be difficult to register words such as ‘Superlink’ for broadband services. But if the word is sufficiently stylized, or presented with a distinctive logo, registration should be possible. A registration in this form puts your interest in the trade mark on the public register, so that anyone who carries out a trade mark search will see that you have registered it, albeit with stylization. People are often pretty risk averse and don’t want to tread on the toes of existing trade mark owners. They may also wonder whether you have been using your trade mark to the extent that you have obtained a degree of protection under the law of passing off (more about that later).

2. Have a go anyway

Surprisingly, descriptive or non-distinctive words are sometimes granted registration. So, if you can afford to take a chance, it might pay off. Your trade mark attorney will feel obliged to tell you that there is a strong chance of rejection, but all you stand to lose is the cost of filing an application. Your attorney can also advise you on drafting the list of goods and services in the best way to minimize the likelihood of objections.

3. Keep good records of your use of your trade mark

You may be able to register a non-distinctive or descriptive word trade mark, or a different kind of non-distinctive trade mark (such as a shape) if you can provide evidence that the trade mark has acquired distinctiveness through the use you have made of it. Even very difficult to register trade marks can be registered this way – for example, the word GLOBAL is registered for telecommunications and broadcasting services! Keep good records of your turnover, advertising spend, social media statistics etc. in relation to the trade mark. You will generally need records going back several years, although evidence of huge publicity for your trade mark can speed things up. With good records you may also be able to assert rights to your trade mark under the law of passing off: if you can prove that you own goodwill attached to your brand, you can object to a misrepresentation (for example use of a similar brand) that causes (or would be likely to cause) you damage.

4. Be careful with the way you use your trade mark

It is particularly important you do not yourself use your trade mark descriptively or in a way that undermines its distinctiveness. Always make the trade mark stand out and resist the temptation to use it in sentences in a descriptive way. If you hope to register your trade mark in the future by showing it has acquired distinctiveness through your use of it, then descriptive use of your trade mark will make unhelpful evidence. If you were lucky and managed to register a trade mark which is not really very distinctive, the way you use your trade mark is still important: it could help prevent your trade mark being cancelled because someone alleges it should not have been registered in the first place.

5. Consider other forms of IP protection, especially registered designs

For logos, patterns and shapes, applying for a registered design is an alternative. Sadly, these don’t last as long as trade marks, but they are inexpensive and tend not to be difficult to get through to registration (objections are very rare in the UK and EU). A possible strategy is to register your unusual trade mark as a design in the first instance, and then, once you have used it enough to be able to show that it has acquired distinctiveness, you can apply to register it as a trade mark, which can last forever.

If you would like to know more about protecting your brands, please get in touch with one of our trade mark attorneys.

Wilson Gunn