Presumably you have made some marketing investigations or put
some thought into what Trade Marks you would want. The usual first
problem is that your desired Trade Mark is probably descriptive. If
it is a word or phrase that other traders would want to use in normal
business then you can't have it - unless you have already built up a
reputation with that word or phrase as an unregistered (de-facto)
Trade Mark. This usually sends prospective Trade Mark applicants
back to the drawing board.
Now that you have thought of your new Trade Mark - ask yourself
whether if you were a Trade Mark examiner you would want to
award that word or phrase to an applicant. In theory its purpose is
to distinguish your goods and services from those of other
businesses (although these days factors such as inherent
desirability of consumer items comes increasingly into play). A
Trade Mark may consist of words, designs, letters, numerals or the
shape of goods or their packaging. There should be no competitive
need for the Trade Mark - E.g. in the case of colours, A Trade Mark
White - for radiators would be anti-competitive to other radiator
manufacturers, as would the term "Mint" for chewing gum (although
the border-line case of "double-mint" was allowed in Europe).
Importantly a Trade Mark registration is made for certain
categories of goods or services (according to the very arcane and
antiquated "Nice" classification system). In general the applicant
states what goods or services he wishes to protect - and the days
are almost gone when you could have a Trade Mark covering all
goods and services. Perhaps if you applied for "gerandi-gerandi
and fallafel fee fi fo" you might be allowed such a wide
'specification' because it is so distinctive that there is no risk that
other traders would want it. Most applicants - having been told that
they cannot have a descriptive Trade Mark however then try to
register a semi-descriptive trade-mark, which is where things get
difficult. "toys-r-us", "halifax", "kentucky fried chicken", "burger
king", "tiny computers", "do it all", "beachfront hotel" etc etc.. most
people want their trade-mark to indicate what their business is. The
trick is not to overstep the line. Include the name of your product, or
the adjective which describes your business, but make it different
in some way - you need "an unusual syntactic juxtaposition" to
quote a UK judge allowing the Trade Mark "Baby-dry" for nappies
or diapers. Other nappy manufacturers certainly will want to use the
words baby and dry, but not with a hyphen between those words.
In many western territories Trade Marks may be registered for
more abstract signs such as a Trade Mark jingle for the radio. The
problem here is how to register it. In territories such as the UK and
Europe you could register a graphical representation of the sound
in the form of a frequency spectrum as a function of time, whereas
the registration of a Trade Mark scent is very problematic. Sounds
have been registered (perhaps at some point the TM Offices will
start accepting mp3s), and some companies have registered
combinations of colours (A particular Purple has been registered
for chocolate, however Orange (TM), the mobile-phone provider,
were asked to include a shape with their colour registration - and
chose an orange square, ). A great example of a packaging Trade
Mark is the Jif Lemon yellow lemon shaped container. Whilst you
might think that anyone should be able to put lemon juice in a lemon
shaped container - Jif lemon have built up such a reputation that
people would mistake your lemon-looking container for the Jif
Lemon lemon container. When a company builds up a reputation in
a Trade Mark - registered or not - most countries will protect that
Trade Mark more than they would otherwise do.
For most new applicants, these considerations are not important -
they want to protect their word mark, and the image of their mark in
a particular representation (their logo) for their company, product or
service. The word or sign must be innately capable of
distinguishing businesses and goods. Therefore "apple" could not
be registered by a grocer - however a computer manufacturer was
allowed to register it. "goldfish" has been registered by several
financial institutions, but a pet-store owner could not register it for
his business. A common-sense approach to what words should be
registrable will be a reasonable guide to how the legal system
works in practice. If you think you wouldn't want to grant it, neither
will the Trade Mark office. Invented words such as "Bovril" and
"Kodak" are safest. Offensive Trade Marks are liable to be
rejected, as will any Trade Mark falsely pertaining to be a royal or
governmental officiality or being otherwise registered in bad faith.
