When choosing a Trade Mark one has to consider two important questions.

1. Is the Trade Mark available for registration?

In this regard, you cannot simply copy another’s Trade Mark as such copying could amount to an act of Trade Mark infringement. To avoid such a risk, it is advisable to conduct some market investigations and research in the form of searches on the internet and on social media platforms to determine if a third party, and more importantly, a competitor is using the Trade Mark. If so, it would be best to steer clear of such a Trade Mark. If your own investigations appear to be clear, the next step would be to contact a Trade Mark attorney to assist you with a Trade Mark clearance search on the Trade Marks register. As part of the search, the attorney will comment on the availability of the Trade Mark and, based on the product or services offering of interest to you, identity and recommend the relevant classes in which the Trade Mark should be registered, as there are 45 classes in total.

2. Will your Trade Mark qualify for registration?

In order to be registrable a Trade Mark must be capable of distinguishing the products or services in relation to which the Trade Mark will be used from the same products or services of others in the trade. A name that describes the product or service offering entirely, such as BANKING for banking services, will not qualify for registration. The strongest types of Trade Marks are Trade Marks that have been invented, such as XEROX, or that does not have a specific meaning in relation to the products or services on offer, such as APPLE for computers. The weakest Trade Marks are terms that are purely descriptive or generic and reasonably required for use by the general public in the normal course of trade. One exception to this rule is if you adopted a descriptive word but, as a result of extensive use thereof, acquired a reputation therein.

If the answer to these two questions are YES, you have chosen a good Trade Mark.

By registering a Trade Mark, the owner will be awarded and enjoy a number of benefits which include:-

The exclusive right to use of a Trade Mark. It also serves as proof of the owners right to the exclusive use of the Trade Mark and, in the case of misuse of a Trade Mark, the owner can institute action against the infringing party. In effect, it is an easy remedy to prevent third parties from making unauthorised use of the Trade Mark.
It acts as a deterrent to potential infringers. By using the registered Trade Mark symbol, the owner of a Trade Mark puts others on notice of its rights.
It attracts licensees and potential royalties .
It is an asset.
A registered Trade Mark empowers customs authorities to prevent the importation of counterfeit goods.

On the flipside, if a third party uses an unregistered Trade Mark, the owner of the unregistered Trade Mark will bear the brunt of having to proof ownership of the Trade Mark, which could be very costly and time-consuming. Pending the outcome of such lengthy proceedings, reputational damage, as a result of confusion amongst members of the public, could occur.