What is (and is not) a trade mark?

In order to register a trade mark it must have distinctive character so that it distinguishes your goods or services from those of your competitors. A trade mark lacks distinctive character if it is descriptive of the nature of goods or services that you supply. For example:

• “Fruit and Veg”
• “Pint of Beer”
• “Professional Carpet Cleaners”
• “Tasty Pastry”
• “Cheap Cleaning”

Place names can also cause potential issues where they are used to give an indication of geographic origin. For example:

• “Lincolnshire Sausages”
• “Worcester Sauce”

Although it should be noted that distinctive character can be acquired through actual use and therefore permit registration. For example:

• British Gas
• Yorkshire Tea

There can also be issues where phrases or words have become customary in an industry or sector and therefore lack distinction in themselves:

• “ … Direct” in the context of mail order retail
• “.com” in e-commerce or online publishing

A mark may also be rejected if it is deceptive or misleading. This is often linked to geographic origin so an application for “Somerset Nectar” may be rejected for an application for cider that is not brewed in Somerset (a region well known for the quality of its cider; or “SwissTek” for a brand of watches with no connection to Switzerland.

Certain names and emblems are protected against registration as a matter of public policy and these include:

• Armorial bearings
• Flags and other State emblems
• Official signs
• Hallmarks
• Abbreviations and names of international inter-governmental organisations

The examiner can reject an application on the grounds that a mark is offensive or promotes illegal activity.

If there is already a registered mark which is the same or similar to your proposed mark (whether audible, visual or conceptual in nature) the examiner may consider that the mark is not distinctive and refuse the application, and the other mark owner will have grounds to oppose the registration. For example:

• Audible similarities: “Goo Gull Search Engine” or “Armour Zone Books”
• Visual similarities would include circumstances where the wording on an existing mark is replaced with new wording in the same font and colours and using the same background or logo design
• Conceptual similarities would include depictions of the same stylised animal for a clothing range where an earlier applicant had already registered both a figurative logo and also the animal’s name in word form.