Let us not call a thing, a thing – Trade mark registrations

29 Jul 2019

In the past months, I have started really paying attention to every billboard I come across. I find myself stopping on street corners, analysing each word, slogan and logo in an effort to determine their process to registration, and the hurdles the marks could have encountered before being registered.

Life has not always been this interesting. Prior to getting involved in trade mark law, I lived in complete oblivion of what happened behind the scenes of the images that hover over us while we drive past our freeways. I have come to learn that it takes more than putting together pretty pictures and stringing along a few clever words, to pass as a trade mark.

A trade mark is crucial to one’s business, as it identifies one’s goods and services and distinguishes it from those of others. On the one hand, it should be intriguing and interesting enough to catch a consumer’s attention and on the other hand it needs to articulate the goods and services provided without being entirely descriptive of those goods and services.

While this may seem elementary (and is probably overstated in some texts), a number of marks on the register of trade marks still fall short of the latter requirement and if the marks were ever challenged, they would be vulnerable to expungement or would be at risk of their rights being limited.

To ensure that you are selecting a strong name and not treading on anyone’s mark, it is advisable to create a completely new mark i.e. an invented word such as XEROX. However, not everyone is gifted with the ability of creating catchy marks that will grab the consumer’s attention and stand the test of time. This is why people tend to slide down the “inventiveness scale” and settle for marks that allude to or describe their goods and/or services.

Although this may seem to be the easier way to choose a trade mark, as it would communicate to the consumers exactly what you are trading in, it may encounter a number of hurdles before it reaches registration, i.e. refusals by the Registrar, oppositions, and infringement claims from third parties.

There are, however, measures one can take to circumvent these hurdles, and one way is making sure that you conduct a search of the trade marks register. This is not compulsory – however, if you are going to use words that are already in existence, particularly which are descriptive of the goods and/or services, you have to ensure that no other marks use those words or marks. If you do find marks identical or similar to your mark, you can make changes to differentiate from the existing mark.

In practice, this will prolong your mark reaching the registration stage as the Registrar may request that you enter endorsements, whereby you renounce the right to have exclusive rights in relation to the descriptive matter. This usually takes place after 6 months of filing the trade mark. Once you agree to such endorsements, it may take another 6 months or even more to receive a notice of acceptance from the Registrar.

Therefore, in the context of trade marks, it is not advisable to call a thing a thing, but rather use the creative and out of the box approach. This may help things move along at the Registry’s Office and will certainly assist proprietors to gain stronger enforceable rights in relation to their marks.

See also:

• The interplay between company name, trade mark and defensive company name registrations
• OAPI trade marks: It pays to oppose
• Do the recent UK trade mark amendments apply to South Africa?

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)