Choosing the right trade mark: why it shouldn’t be descriptive

We know, we know. It’s not easy settling on the right brand name for your business.

You need a brand that: i) lets consumers know something about the goods and services that you offer; and ii) sets you apart from your competitors.

However, it is the first requirement that we see many businesses struggle with, particularly when it comes to protecting that brand name through registered trade mark protection.

The long and short of it is that, within many territories (including the UK and EU), trade marks which are considered “descriptive” or “non-distinctive” of the goods and services for which they are used are not eligible for registered trade mark protection.

A good example of a “descriptive” and “non-distinctive” trade mark would be ‘THE LONDON BURGER RESTAURANT’, filed in connection with “restaurant services” in class 43, or ‘THE BEAUTY SPA’ for “beauty salons” in class 44.

This does not mean that a business owner cannot file for words which have descriptive meanings, however. It simply means that the descriptive meaning must not relate to the goods/services for which it is filed.

A classic example of a valid trade mark using a descriptive word is the ‘APPLE’ trade mark – this word would likely only be considered “descriptive/non-distinctive” if filed in connection with “processed apples” in class 29 or “apple sauce” in class 30 (for example), but is distinctive when filed in connection with “software” and “handheld computers” in class 09. In other words, the general public would see the word ‘APPLE’, when used in connection with “computers”, to be the name of an individual business owner, whereas would not consider this to be the case if used in connection with fruit and vegetable products.

The question a business owner should ask itself is: does this mark need to be used by other business owners in order for them to fairly describe the goods/services they offer? If the answer is “yes”, the trade mark will likely be considered descriptive. This is because, for public policy reasons, a trade mark owner should not be allowed to monopolise use of words which are descriptive in connection with those goods.

If you need advice before finalising the name of your trade mark, we are happy to help. Please contact us at Tom@Briffa.com

Written by Tom Broster