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Choosing the right trade mark for your digital products

Trade marks are extremely valuable forms of legal protection as they can be used to prevent third parties using identical or similar marks.  They can also last forever if they continue to be used.  However it is important that businesses choose the right trade marks as the wrong trade mark can give little if any protection.

September 2013

A trade mark means "any sign…. capable of distinguishing goods or services of one undertaking from those of other undertakings".  As a general rule, words may not be registered if they are descriptive of the goods or services in relation to which they are used or if they are generic.  No one business is entitled to monopolise a general descriptive word by registering that word which would prevent other businesses using the same descriptive word.  However businesses may want to use marks which describe the goods or services they provide.  These are the marks which are most difficult to register.  The more a mark is distinctive, the easier it is to register and the easier it is to prevent third parties using it.  On the other hand, the more descriptive it is, the harder to register and the harder to stop third parties using.

LegoThe words most likely to be capable of registration of trade marks are those with no obvious descriptive link with the product.  The best trade marks are often invented words, which are meaningless but punchy and with no connection to anything at all.  Classic examples are Kodak and Lego.

Existing words can also be strong trade marks if they are completely unassociated with the product.  Consider the fruit trio of APPLE, BLACKBERRY and ORANGE – strong trade marks all of which are ordinary English words.

It is possible to overcome an objection that a mark is descriptive and non-distinctive by filing evidence that the mark has become distinctive through use.  This evidence has in general to date from the period before the filing of the application, has to be use in the country in which registration is sought and also relate to the goods or services covered by the application.  In the UK, a period of use of at least two years before the application date is usually required in order to show that a mark has become distinctive (although if there has been considerable consumer awareness of the product in a shorter period of time this may be enough).

customer budgetsAs an example of the difficulty in registering descriptive terms, O2 filed two UK trade mark applications for THE BASICS and THE WORKS for a range of goods and services including telecommunication services, broadband services, broadcasting services and leasing of access time for data networks.  The Hearing Officer found that "providers of broadband, digital television and email services normally provide a range of service options depending on the consumer's need and budget and are likely to present – possibly as their cheapest option – a basic  package".  He therefore found that THE BASICS may either describe the product itself or a set of rules allowing the customer to make full use of the product.  This view was upheld on appeal and it was found that consumers will believe THE BASICS refers to a level of service or that the service on offer focuses on providing basic facts or principles.

With regard to THE WORKS, the Hearing Officer found that the phrase would not be seen other than as a reference to the extent or breadth of service being provided and "registration of such a phrase would clearly serve to inconvenience other parties seeking to use it in the course of their trade".  On appeal this was found to be a borderline case but the objection was maintained in respect of the services covered by the application.

on airA&E Television found difficulties trying to enforce a descriptive mark against the Discovery Channel.  The Claimant broadcast two channels in the UK, HISTORY and MILITARY HISTORY and claimed an extensive reputation and goodwill in these marks.  They were also the registered proprietor for a number of trade marks including the word mark THE HISTORY CHANNEL.  The defendants broadcast the channel DISCOVERY HISTORY.  The Court found that the defendant's use of the word HISTORY did not infringe the registered trade marks because it described the services in question, namely a channel which provided history programmes.

One way to register a descriptive or non-distinctive mark (if there is no evidence of use) is to apply for it in a stylised version or with a logo.  The limitations of such registrations were however revealed in the case Starbucks brought against SKY.  Starbucks is the proprietor of the  European Union trade mark registration below for various goods and services. 

Now

It commenced proceedings against SKY who intend to launch a new Internet television service under the name NOW TV with the following logo.

Now TV

Starbucks found however that this was not the best case to have brought as their mark was found to be descriptive and invalid and was not infringed by SKY.  The Court commented that the registration for NOW only could be registered because it contained figurative elements.  Starbucks was however seeking to enforce the registered trade mark in relation to signs not including the figurative elements.  The Court also warned Trade Mark Registries to be aware of this consequence of registering descriptive marks under the cover of a "figurative fig leaf of distinctiveness" and that they should refuse registration of such marks in the first place.

The lesson from the above – use invented words as your marks or words which do not have any connection with your goods and services.  Using and registering descriptive marks may well not be sufficient to prevent you stopping third parties using the same or similar marks.

If you have any questions on this article please contact us.

choosing the right trade mark
Chris Benson


Chris Benson explores the issues faced in selecting the right trade mark.

"Using and registering descriptive marks may well not be sufficient to prevent you stopping third parties using the same or similar marks."