We recently wrote about the importance of registering a trademark, but what is their fundamental purpose and how do we tell trademarks apart from other types of intellectual property (IP)? These are some of the business legal advice questions we get asked here at LawBite from time to time and this article is intended to help demystify this area of intellectual property law once and for all.
Think of trademarks as ‘source identifiers’ or ‘badges of origin’ if you like, which enable customers to recognise products as originating from you. Whether it’s subconscious or not, we’re all influenced in our buying habits by the existence of trademarks and they are ultimately what generate brand loyalty. On buildings, labels, products and packaging, in the shops, at home, at work and on holiday, we are surrounded by trademarks day in and out.
To help illustrate their scope and reach, set out below are examples of the types of things which you can trademark protect:
• Brand and product names (e.g. Microsoft and iPhone)
• Personal names (e.g. Jamie Oliver)
• Symbols, images and logos (e.g. the Nike tick, the multi-coloured ‘eBay’ letters, and Audi’s four interlocking circles)
• Slogans and phrases (e.g. Loreal’s ‘Because You’re Worth It’)
• Designs, letters, numerals (e.g. IBM)
• Shape or ‘get-up’ of goods or their packaging (e.g. the shape of the Coca-Cola bottle)
• Sounds (e.g. MGM’s roaring lion)
• Gestures (e.g. Asda’s double-tap gesture)
• Colours (e.g. T-Mobile’s magenta)
• Smells (e.g. “Flowery musk scent” in Verizon stores)
• Moving multimedia images (e.g. certain video game play mechanics)
7 categories of trademark which will be rejected
So does this mean that anything that fits into one of the above categories can be protected following a successful trademark application? Not quite. Apart from the last bullet point below (which relies on opposition by the third party), trademark applications which fall into any of the following categories will be outright rejected by the trademark office:
1. marks which are devoid of any distinctive character
2. marks which describe any characteristic of the goods or services (e.g. their kind, quality, quantity, intended purpose, value or geographical origin)
3. marks which have become customary or generic in the relevant trade (e.g. cello tape)
4. shapes which results from the nature of the goods, are necessary to obtain a technical result, or which give substantial value to the goods
5. marks which are contrary to public policy or to accepted principles of morality (e.g. swear words), are deceptive, or which constitute specially protected emblems (e.g. the Royal arms)
6. marks involving applications made in bad faith (e.g. if the intention is to stop somebody else using the mark, rather than actually using it yourself)
7. marks in which a third party already has rights in the same field of use
The importance of distinctiveness
Since some of the fundamental prerequisites for trademark protection are that the mark is sufficiently distinctive and non-descriptive or generic, made-up words which bear no relation to the product itself make perfect trademarks. However, non-distinctive marks may still succeed if the mark has in fact acquired a distinctive character as a result of the use made of it.
A recent example of this argument in practice was seen in the Nestlé case, which recently lost the latest round of its ongoing battle with Cadbury over securing an European Union (EU) trademark for the shape of its four-finger KitKat. Cadbury tried to claim that the shape of the 3D chocolate bar had no inherent distinctiveness. Nestlé argued that the shape had acquired distinctive character through its use in the EU. The court disagreed, finding that it must be proved that a mark has acquired distinctive character in all EU member states and this mark was not sufficiently known in Belgium, Ireland, Greece and Portugal.
The upshot is that competitors are now free to manufacture their own four-finger chocolatey imitations without being sued for trademark infringement. A real blow for Nestlé and a lesson in the importance of distinctiveness when it comes to trademarks.
The trademark registration process
What actions should you take now?
If you have any branding for which you don’t currently have trademark protection and you would like to put this in place, check out our various trademark products or get in touch to discuss how we can help! If you are still unsure, use our Free Intellectual Property Checklist and get your free 15 minutes legal consultation today.
To speak to the author of this article, Laura Symons, or to begin the trademark application process please do enter an enquiry or call us today on: 020 7148 1066 and speak to a member of our friendly Client Care Team.