Nothing is more annoying than your trademark application being refused, and not just because of the lost application fee. There is also the fact that a trademark which has been refused cannot be registered in the Trademarks Register. You do not have a monopoly on your trademark then, which means that anyone can use it. Refusal often happens because a trademark is descriptive. So what does it actually mean, descriptive? Also, and more importantly, how can you avoid your trademark being descriptive? That is easier than you might think.
What is a good trademark?
A good trademark for your product or service is distinctive. That means it does not just simply describe what you are offering. However, it is all too easy for a descriptive element to creep in because it is very tempting to include characteristics of your product or your service. Your customers then see straightaway what you are offering, and you have lower marketing costs. Characteristics are not distinctive though.
Suppose you are selling cakes that you want to register a trademark for. You take a good look at your product, and you think, “ok, lovely cakes, nice and sweet, fresh out of the oven and made in Deventer”. Are these good characteristics? They are for your product, but they are not distinctive; lovely and cakes describe the cakes, sweet describes the taste, fresh the quality and Deventer the origin. You have a good description of your product, true, but it is not distinctive, so it cannot serve as a trademark.
What does ‘distinctive’ mean?
Distinctive means that your trademark can distinguish your products or services from those of your competitors. When a consumer sees your trademark for your products or services it should make them think about your company, not that of your competitors. If you were to call your cakes Blue light, Laylacake or Van Dijk, that would be distinctive because it does not say anything about the cakes themselves. In the same way, if you were to call a graphic design studio Little Cakes that would also be distinctive because that name would not describe the services you offer. What is descriptive for a particular product or service is not necessarily so for another.
Tips for a distinctive trademark
- Choose something that does not describe your product or service, like Steps for butter biscuits for instance.
- Add a distinctive feature, like Bredewouts biscuits for example. Here the proper noun Bredewout is the distinctive feature. Your competitors can no longer use ‘Bredewout biscuits’ as a trademark then.
- Design a distinctive logo. Adding only one colour to the descriptive words will generally not be enough. Good to know: registering a logo does not mean you claim the descriptive words included in it. You actually claim the logo as a whole.
To summarise: do not use the general characteristics of your product or service to describe your trademark; make sure that you make your trademark distinctive.
