What can be registered as a trade mark?

It’s a common misconception that everything and anything can be registered as a trade mark. In fact, there are a number of rules governing what can and can’t be registered and, with a growing number of trade marks on the register, these rules are being applied ever more strictly.

So let’s start with the positives, what can be registered? Well, the two most common trade marks are word marks and logo marks (sometimes called device marks). Word marks are, as the name suggests, your brand name only, normally in capital letters, with no stylisation or graphic elements. Conversely, logo marks are trade marks depicting a particular logo, graphic or icon (which may or may not include your brand name).

Word marks therefore offer the broadest monopoly right over a given name whereas logos offer a narrower, more specific monopoly. Beyond words and logos, it’s also possible, in limited circumstances, to register sounds, colours and shapes. However, these can be harder to get through because of the various refusal reasons outlined below.

In terms of what cannot be registered, unfortunately, this is a longer list and includes marks which are:

• Descriptive of the relevant goods and services;
• Insufficiently distinctive (i.e. generic or commonplace);
• Offensive (e.g. containing swear words);
• Misleading (e.g. incorrectly suggesting that a product is organic);
• Making use of a national flag without permission; and
• Making use of official emblems or hallmarks without permission.

Some of these hurdles, particularly descriptiveness and distinctiveness can be hard to assess so it’s always worth seeking legal advice before submitting an application.

It’s also important to note that the above all relate to issues that your trade mark application might face at the “examination” stage. However, the most contentious reason for a trade mark application to not progress to registration comes slightly later, at the “publication” stage. This is a 2-month period (in the UK) in which a third party can oppose or threaten to oppose your application, typically on the basis of earlier registered or unregistered rights, but also for issues such as bad faith or any of the grounds mentioned above. It’s for this reason that clearance searches are often a very important preliminary step before an application is filed.

Fortunately, Briffa’s team of expert trade mark lawyers is on hand to help you with any and all issues that you might face when registering a trade mark. Just email info@briffa.com to set up a free consultation meeting.