Is your trade mark descriptive?

As you may know, descriptive marks may not be eligible for trademark protection unless they have obtained distinctive character after long-period business use. In most cases, long term use refers to at least 5-year marketing. Under this circumstance, ‘descriptive character’ could be acquired though use when consumers come to associate the descriptive term with a specific source or brand, rather than just its generic meaning. For example, American Airlines has been registered as a trade mark providing flight services. In this regard, for a new brand, it is important to assess if your brand is a descriptive term before you file a trade mark application.

In other words, a trademark must be distinctive. There are some scenarios in which a trade mark could be categorized as most to least distinctive:

• Fanciful or Coined Marks:

These are entirely made-up words or combinations of letters that have no meaning before being associated with a particular product or service. This category is preferred when considering the scope of trade marks.

• Arbitrary Marks:

These are existing words or symbols that have no direct connection to the product or service they represent. This category is preferable in terms of trade marks.

• Suggestive Marks:

These marks indirectly suggest a quality or characteristic of the product or service without explicitly describing it. when you consider an option under this category, there maybe has a risk of being refused by the Trademark Office.

• Descriptive Marks:

These directly describe a characteristic or quality of the product or service. For instance, you may fail to obtain a trade mark of ‘dental treatment’ for a dental clinic.

• Generic Terms:

These are common words that describe the general category of the product or service and cannot be trademarked. Generic terms may have strong connections with social culture and customs. So, it may differ across countries.

Descriptive trademarks typically cannot be trademarked because they do not meet the fundamental requirements for trademark protection. Trademarks are meant to distinguish the goods or services of one company from those of others in the marketplace. To serve this purpose effectively, trademarks should be distinctive and not merely describe the product or service they represent.

Here are a few reasons why descriptive trademarks are generally not eligible for trademark protection:

• Lack of Distinctiveness: Descriptive trademarks directly describe the characteristics, qualities, or features of the product or service they represent. This makes them less distinctive and unique in the eyes of consumers. Trademarks are intended to help consumers identify the source of goods or services, and descriptive terms do not fulfill this function effectively.

• Public Interest: Allowing descriptive terms to be trademarked could give one company a monopoly over a word or phrase commonly used to describe a type of product or service. This could limit competition and harm the public interest by restricting the language available for describing and discussing those goods or services.

Fair Competition: Trademark law aims to encourage fair competition in the marketplace. Allowing one company to monopolise a descriptive term could hinder other businesses from accurately and fairly describing their own products or services.

If you have any questions in relation to your trade mark applications, please contact our Trademarkroom team at here