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Choosing a ‘good’ trade mark (a lawyer’s take)

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Published Date: June 3, 2022

Thinking of a new brand name? There is a chance that the name you are thinking of using for your new business might not be protectable or that the use thereof can get you into a legal dispute. 

There is a lot at stake when making this decision. You may find yourself in a position where you have spent a lot of money and effort on brand recognition only to discover that your trade mark is not capable of registration, that someone has already adopted the name or that the mark is not enforceable.

It goes without saying that having a registered trade mark is invaluable for any business. Some of the benefits are highlighted below.

    1. Registration provides an easy remedy against infringement.
    2. It helps consumers identify your products/services and brand.
    3. It acts as a deterrent to potential infringers.
    4. Trade marks can appreciate in value over time. The more your business reputation grows, the more valuable your brand will be. 
    5. Trade marks can be sold, licensed or used as a security interest. 
    6. Registration allows a trade mark owner or licensee to use the words ‘Registered Trade Mark’ or an abbreviation thereof or the international recognised symbol ® in conjunction with the trade mark.
    7. Trade mark protection is renewable. In most cases, you are afforded protection for a 10 year period. 
    8. Registration affords a prima facie right to use the trade mark concerned.

Choosing the right trade mark requires a great deal of thought. As trade mark attorneys, we are often confronted with trade marks that are sometimes underwhelming. With the above in mind, how do you go about choosing a good trade mark? 

In order to choose a good trade mark, we need to understand the basic requirements thereof, namely:

a.  Your mark should be capable of distinguishing your products/services from those of others.
b. Your trade mark should not conflict with prior marks on the register or marks being used in the trade.

When dealing with the first requirement, we consider 5 different categories of trade marks.

    1. COINED/FANCIFUL MARKS – a fanciful trade mark is a made up or coined term that had no meaning before its use as a trade mark. Some examples include XEROX, KODAK, SKYPE, ADIDAS and ROLEX. In most cases, it is easy to secure registration of these kinds of marks, where relatively available.Of course, with fanciful marks or coined terms, greater marketing efforts may be required to promote your goods or services, especially in the early stages of your business when most consumers do not know who you are or what you have to offer.

2. ARBITRARY MARKS – these are marks which already exist but are being used in a way that is unrelated to its meaning or your business. A classic example of this is APPLE for computers. Clearly iPhones and laptops have nothing to do with fruits or cider. More examples include SHELL for petrol stations and AMAZON or GUMTREE for online marketplaces.Again, with these kinds of marks comes greater marketing efforts to promote your business as the public will not immediately know what you are selling or what service you will offer.

3. SUGGESTIVE MARKS – a suggestive mark hints at the type of goods or services you offer or the quality thereof. Examples of these marks include, NETFLIX (movies (‘flicks’) that are ordered online) and MICROSOFT (suggests software for small computers).Suggestive marks are also generally good for trade mark purposes as they are often catchy and clever and immediately informs the consumer what your products/services of interest are. As long as they are not entirely descriptive of your products/services, they make great trade marks.

The above types of marks are inherently distinctive trade marks – these are among the easiest to protect. 

4. DESCRIPTIVE TERMS – these marks merely describe the goods or services you offer. An example of this is COLD MILK for dairy products. These kinds of marks would normally fall foul of the first requirement in a) above. However, all is not lost. If you have adopted a mark that is descriptive, you may still be able to protect it by showing that it has acquired distinctiveness through use. 

5. GENERIC TERMS – these are marks which are understood by the public as the common term for a product or service. For example, the word “chocolate” would be generic for chocolate bars. Try to stay away from these terms when choosing a brand name. 

Ultimately, the strength of a trade mark also depends on how well consumers associate your mark with your products and services compared to others. Memorability and contextuality is key.

The second requirement, in b) above, is whether the mark is available for registration, relative to other marks on the register. 

To help us determine whether you comply with this requirement, we conduct a trade mark search prior to filing an application. A search is important as it helps us determine whether adopting your trade mark is likely to result in a conflict. 

It is best to check this before you go into the business development phase, decide on a mark, become emotionally attached to it and invest a lot of time, effort and money in it, only to find that your mark infringes existing rights.

Here are some further tips for those of you who are still in the drawing-board phase and cannot settle on a brand name. 

    1. Consider inventing a new word. Drug companies tend to take this approach, e.g., PROZAC and VIAGRA.
    2. Combine two existing words and create a new one. A good example of this is the trade mark YOUTUBE. It includes the word YOU and TUBE and in doing so creates the idea of watching something of your choice. It is authoritative and catchy. 
    3. Consider combining descriptive or generic words with arbitrary marks. Examples of this include, PANDA EXPRESS and HUNGRY LION
    4. Consider words that invoke a certain emotion or call to action. E.g., GEEK SQUAD for IT services or ROAD RAGE for road safety services. These examples have desirable meanings but are not descriptive. 

With all that is said and done…. NOT protecting your IP (according to this lawyer), is a BAD business decision. 

Kim Erasmus
Associate | Attorney
Sajidha Gamieldien
Partner | Trade Mark Attorney

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