Every day hundreds of trademarks are being created and filed for registration in different offices around the world. Therefore, the protection of intellectual property rights through registration is an important element of any business strategy.
In my practice over the past few years, as an intellectual property practitioner, I have often encountered the following problem: businesses spend huge amounts on the creation and development of a new mark without verifying whether the mark is free for use or if it is free whether it is sufficiently distinctive, whether it is registrable. Therefore, the strongest trademarks are those that are distinctive. When a trademark is distinctive, it can be successfully registered, of course, in case no opposition notice is filed. The topic of a preliminary search will not be affected in this publication as it is developed in the article “Why are you advised to conduct a preliminary trademark search?”. This article aims to provide information on the benefits of the registered trademark and also what trademarks are advisable to be created and registered and, respectively, which trademarks are not recommended to be created.
I. ADVANTAGES OF TRADEMARK REGISTRATION
In the first place, the right to a trademark is acquired by registration. The right of registration belongs to the first applicant. The right to a trademark is an absolute right. The registered trademark has many advantages:
– The owner of the trademark has the exclusive right to use the trademark for the goods and services for which it is registered on the territory in which the trademark has an effect. The owner of the mark also has the right to dispose the mark (to sell it, to make it available for use by concluding a license agreement, etc.) and to prohibit third parties without his/her consent from using a sign which is similar or identical to the mark for identical or similar goods and/or services in the commercial activity.
– Registered trademarks are publicly available and anyone can check whether a trademark is registered or not.
– The owner of a registered trademark may oppose the use of a similar or identical trademark of his trademark for similar goods and/or services by seeking his rights under the statutory order undertaking all legal proceedings and actions to stop the violations.
– The mark may be renewed indefinitely after the 10-year term of protection has expired, which means that a registered and renewed mark may have an effect for an unlimited period of time.
– The registered trademark has added value since it is an asset of the enterprise and can significantly increase the value of the latter.
– Proprietors of a registered trademark have the right to place a ® mark near them, which only creates greater confidence on the end user side.
Equally, for the above mentioned reasons why it is good to register a trademark is also the fact that a registered mark provides an advantage in the market leading to a growth in the development of the company itself. The advantage is that end-users are easier to orientate and know their favorite products in terms of trademark rather than the company behind it. In support of this, there is also an official study by the European Patent Office and the European Union Intellectual Property Office, according to which, companies registering industrial property rights (trademarks, designs, patents, utility models) have a 21% higher probability of growth in their development than those who do not register industrial property rights.
II. WHAT TRADEMARKS ARE RECOMMENDED TO BE CREATED AND REGISTERED?
In the first part of the publication, we highlighted the benefits of registering a mark. In the second part we will explain what trademarks are recommended to be created and registered, and respectively, what trademarks it is not advisable to be created. Unfortunately, the practice most often shows that businesses demanding more easily to place their goods and services on the market in the majority of cases are tempted to register trademarks that have informative and laudatory content. These are trademarks that provide information about the good or service, such as name, type, quality, purpose, geographical origin of the good or service or other characteristics. In legal doctrine, however, these marks enjoy less protection, and very often such signs are not registrable, which is why they cannot understandably pass the examination on absolute grounds for refusal. In this line of thought, it is important to note that a mark will be more distinctive, and therefore will have a wider scope of protection if it is cleared from indicative or suggestive meaning to the user. Conversely, the more descriptive and less distinctive a mark is, the smaller the scope of protection. Therefore, we can highlight the following types of trademarks which are registrable and are subject to protection and are recommended to be created, namely:
Fanciful (inherently distinctive) marks – these trademarks have the greatest range of protection, as they are usually fictional words and to the greatest extent fulfill the essential function of the trademark – to distinguish the goods or services of one person from those of others. Examples of such marks are: Adidas, Pepsi and others. The advantage of fanciful marks is that they are legally registrable and have the widest range of protection but the main disadvantage is that their owners should put much more money and effort into placing them on the market.
- Fanciful brands are absolutely distinctive. In fact, the trademark is much stronger as it is unrelated to the characteristics of the product/service indicated by it, which makes it possible for a stronger association of the product/service with the mark.
- They are registrable and have the widest scope of protection.
- Owners of fanciful trademarks should invest much more money and effort to put them on the market because fanciful trademarks are not directly associated with a product or service, so the owner of a fanciful trademark will have to inform end-users through significant ad campaigns requiring an additional budget.
Arbitrary marks – these are signs that have their own meaning, but are used for goods or services that are in no way related to the meaning of the signs. A good example of such a trademark is “Apple” for computers.
- The name itself enjoys a familiar meaning in society, which makes it easier for the mark to get into the market, as consumers will perceive it and remember it more easily.
- Less likely to turn into a generic mark, that is, to become so general that the owner cannot prevent third parties from using the mark.
- Creates a secondary meaning of the common name used, which excludes consumers from confusing the type of good/service offered under the given trademark.
* For example, the word Penguin – is initially associated with the flightless bird, while the secondary meaning of the word is associated with the Penguin brand for publishing houses.
- There is the possibility that someone has already registered and/or used such a mark for the same goods/services as yours.
Suggestive marks – these trademarks are expressions, word combinations or other combinations of signs and that contain an element that directs users to a characteristic of the goods and/or services but does not describe them directly. It should be kept in mind that their scope of protection is smaller than that of fanciful and arbitrary marks. Example of such marks is “Blu-ray”, a new technology of high-capacity data storage that utilizes a “blue” (actually violet) laser.
- They require less money to put them on the market because it is easier to link a product/service to the owner with the mark itself.
- There is a risk that, when registering the trade mark, the experts at the Patent Office will treat the mark as non-distinctive, that is to say descriptive of the goods/services claimed.
At the same time, as an advantage and disadvantage, it can be argued that suggestive marks require end users to engage their imagination and perceptions of thought in order to link the mark to the good/service offered through the mark.
III. WHAT TRADEMARKS ARE NOT RECOMMENDED TO BE CREATED AND APPLIED FOR REGISTRATION?
The following marks are not subject to protection: therefore, it is not advisable to create such marks:
Generic terms – generic terms cannot be registered as trademarks. Examples of such terms are “furniture” for any type of furniture, “TV” for television. Descriptive signs are also not subject to protection because they are non-distinctive. Typical examples of descriptive marks are: SUPER, EXTRA, EXCELLENT for all goods and services; CHEAPEST, THE BEST PRICE for all goods and services; GREECE for olives, as well as SWITZERLAND for chocolate products, etc. There is a way for such marks to be registered as a trade mark if a distinctive word or figurative element is added, as a result of which these marks become distinctive and registrable. However, it should be borne in mind that the scope of protection of such marks is smaller and their opposition to infringements of similar trade marks is difficult as they should be imposed on the market. In that regard, it is important to note that the proprietor of such a registered mark has an exclusive right to the overall design of the mark as it is registered – figurative elements, specific font, colors and others and can not prohibit the use of descriptive word elements by other persons. Such trademarks are not recommended to be created and registered because they cannot perform well the basic function of the mark.
Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide information on the benefits of the registered trademark and also what trademarks are advisable to be created and registered and, respectively, which trademarks are not recommended to be created. It does not constitute a legal opinion and cannot be interpreted as an individual consultation on any concrete facts or circumstances. The advice of intellectual property specialist should be obtained for specific questions and situations. For more information on the above mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers comprehensive analysis and strategy for the effective protection of trademarks as objects of industrial property, both at the time of registration and in violation of the rights thereto. The IP lawyer in Bulgaria Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.