First, seek distinctive brands not descriptive brands.

Managers love descriptive marks. They mean something, they describe at least one feature of the product or service. Being descriptive may work in  the marketing arena, but it's bad in a court of law and makes trade mark registration impossible, difficult or problematic.

One aspect of the law's view is that descriptive marks are obvious. They are said to very rarely meet the legal requirement under trade mark law of being "distinctive". Simply stated, trade mark law's view is nobody should be granted a statutory law monopoly over a descriptive word when it describes a feature of a product or service, eg "Sharp Blade" for knives. In contrast, "Furi" is registered in Australia in a logo form (as illustrated above).

Trade mark and name protection law in Australia and other nations grants limited or no monopoly rights to descriptive marks, names and brand. There are exceptions in certain circumstances.

In the High Court of Australia case, Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513 sets out the classic test for whether a mark can be legally said to be adaptation to distinguish it from others:

• "The interests of strangers and of the public are thus bound up with the whole question, ...it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives ... will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it." [our emphasis] 

See also: Why distinctive trade marks are the fittest for survival [PDF]. 

Arising from the above, among the best known and most remunerative trade marks are those which are completely meaningless, such as Google or Kodak, as they are distinctive of their owner's products or services. In the legal arena it also helps that they are short words and not a jumble of words, logo and tagline. Keeping it simple and focused makes legal sense.

Second, consider how the brand will be used.

Is it to be used online (eg in a domain name) or off-line (eg on packaging, brochures or letterheads)? Where will it be marketed, eg in a supermarket, on a website, on television? Will it appear often in digital media or in billboards, "street furniture" ads, newspapers, magazines, radio, or television?

The questions about use seek to see ahead into practical questions affecting use, all of which can have legal implication (eg to set the description of goods and services in a trade mark application). The use of the mark should also be considered to shape its nature and design. This leads to the third step.

Third, consider the sound and look of the brand.

With words their sound and pronunciation is important, especially on radio but increasingly on the web as well. Will people be able to pronounce it? Will they spell it correctly for internet search engines or direct domain name searches? Is the name too long?

As for look, consider visual features such as package size, shape and style and brand colour, typeface, layout and the possibilities for animation in digital media. 

Want free initial legal advice?

Let's talk about your intellectual property, commercialisation and business law needs. 

Call Noric Dilanchian of Dilanchian Lawyers & Consultants: Tel (+61 2) 9269 0229.

After hours send an email or better still an Enquiry Form. We'll reply with a costed proposal.

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