The most essential part of the trademark creation process, even before thinking about the tactics and strategies to follow, is to find the core idea behind your business's branding. The reason is primarily that the brand is much wider than the trademark itself as it encompasses the emotional, rational and cultural image that consumers will associate with your business. The core idea will then be your guide in creating your trademark, whatever that is. Perhaps with such a big pool of trademark types to choose from (Word, Figurative, Shape, Position, Colour, Pattern, Motion, Sound, Holograph, Multimedia to name a few) one further decision will be to choose the specific type. However, most of the times and for most new companies or companies that are new to intellectual property, a word, a figurative mark or a combination of the two will suffice. Once you come up with the core idea, the ingredients below should be included each and every time with great caution.
The first thought that comes in mind most of the times is to create or write down something simple and common which has to do with what one offers or even draw the shape of the products. Now, what is the problem with this process? Firstly, it is contradictory to the primary purpose of having a trademark in the first place. That is, to distinguish your brand from all the others in order for your brand to be uniquely associated with what you offer. It must not provide information on the nature of the goods or services concerned but instead indicate their origin. And secondly, one must take into account the most common grounds for refusal which have to do with reasons inherent to the trademark itself. These are called absolute grounds and are examined by each IP office on submission. Of those, the grounds mostly referred to are distinctiveness and descriptiveness and this is why they are considered essential ingredients that need critical thought during the creation process.
Distinctiveness & Descriptiveness
Distinctiveness as defined by the European Guidelines is the ability of the trademark to identify the offering in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish the offering from those of other undertakings. This is always assessed with reference to what the public perceives in connection with what it offers. (Such as the word 'Eco' or 'Ultra')
Descriptiveness as is also defined by the European Guidelines, exists whenever the trademark describes the characteristics of its offering or some of its features. The public's perception is also relevant in this occasion. Therefore, a trademark will be descriptive if it is perceived by the relevant public as providing information about the goods and services applied for. (Such as the word 'Baker' for pastry products)
Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.
Important elements to have in mind are, the typeface used, the colour combinations, the positioning of any word elements, the stylization and its nature in general. For example, utilising white letters, in a common typeface such as Arial, for a word positioned horizontally with a variation of basic geometrical shapes such as square with rounded corners and a black background is unlikely to be capable of being committed to the memory of the relevant consumers in respect of the offering.
To sum up, a trademark must not describe what it offers and must be able to stand out from the competitors for a greater chance of receiving approval for registration and to have a lasting impact on the public's memory and perception.
And what are the benefits of trademarks
- distinguish your products and/or services
- be great marketing and communication tools
- become the basis for building reputation and trust
- prevent confusion
- last for a very long time
- provide competitive advantage
Originally published 07 May 2020.The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.