Trade Marks

Classification:

Trade marks are registered in specific classes, depending on the nature of the goods and/or services in relation to which they are used. To enable a trade mark attorney to identify the classes of interest, prior to conducting a search or filing a trade mark application, a detailed description of the product and/or service offering is required.

Registrability and availability:

In order to secure protection, a trade mark should be both registrable and available. Therefore, before adopting a trade mark, it is crucial to address two key questions.

1. Is the trade mark available for registration?

Conducting thorough searches on the internet and social media platforms can help identify any potential conflicts. However, following this, consulting with a trade mark attorney for a comprehensive clearance search on the trade marks Register is advisable. The search will essentially determine if any conflicting prior trade marks exist on the Register that could interfere with the adoption, use or registration of the proposed trade mark.

2. Will your trade mark qualify for registration?

For a trade mark to be eligible for registration, it 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. Strong trade marks that are inventive or hold no direct meaning in relation to the products or services offered, are encouraged.

Registering a trade mark provides exclusive rights to its owner, and the ability to prevent competitors from using the same or a similar trade mark. In cases of misuse or infringement, the owner can take legal action against violators. Moreover, owning a trade mark can attract licensees, potential royalties, and increase the company’s overall value as trade marks are valuable assets.