• Intellectual property
  • June 01, 2021

What can and cannot be trademarked, and how long do trademarks last?

By Lawbite Team

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Let’s start from the beginning…

What is a trademark?


Trademarks protect distinctive branding elements which are capable of distinguishing your goods and services from those of other traders. We’re not just talking words (whether that’s your trading name or a product or service name) but also logos, slogans, designs, letters, numerals, personal names, sometimes even colours, musical jingles, smells and hologram and movement marks - all the things you use to build brand identity and recognition and customer loyalty. 

What can and cannot be trademarked?


One of the key criteria for trademarks is that they must be distinctive and recognisable in order to actually be registrable. Although marks that describe a feature of your offering may carry marketing value, the best and most effective trademarks are those that bear absolutely no relation to the products or services they’re used for. Completely invented words are ideal (think brands like Microsoft, Google or Kodak). Arbitrary marks used out of their normal context, meaning existing words which have a meaning which isn’t usually associated with the goods or services, also make good trademarks too (e.g. ‘Apple’ for software and ‘Dove’ for personal care products). 

If marks are generic or descriptive of what you’re selling, they can be difficult if not impossible to register and will generally be refused by the trademark office. The logic behind that is that those sorts of marks should remain freely available for all traders in that field to be able to use to describe what they sell.

Trademarking slogans can be tricky in this respect. Often they’ll just be promotional statements or informational messages that would be seen by customers as laudatory or marketing phrases and therefore lack the requisite distinctiveness. One such example of a refused slogan was “THE TASTE OF PREMIUM ICE CREAM WITH THE CALORIES OF YOGURT”, for frozen custards. This was not deemed to be original enough to immediately be perceived as a distinctive mark for those products.

It’s also not possible to trademark something where that name/phrase/logo etc. (or something confusingly similar to it) is already trademarked. Generally, this will only be a problem though if that earlier mark covers identical or similar goods and services. Think about Polo - you’ve got the polo mint sweets, you’ve got polo shirts and you’ve also got Volkswagen Polo cars - all of those happily co-exist because they’re not in the same field so consumer confusion is unlikely. 

So a thorough search of the trademark databases is crucial to check for earlier identical/similar marks in a similar field. You don’t want to waste money paying filing fees to the trademark office only to find out that there’s an identical or near-identical mark already registered, or accidentally adopt someone else’s mark and end up in a trademark war. 


How long does a trademark last?


Once you’ve got your registered trademark, it has to be renewed every 10 years. So trademarks can potentially last forever if you keep paying the renewal fees. That said, marks can be cancelled or revoked if they haven’t been continuously used in the last 5 years, so it’s vital to keep records to prove genuine use (such as invoices, sales records, product and packaging samples bearing the trademark).

Questions?


Trademark law can be difficult to navigate. If you have any questions regarding trademarks or Intellectual Property (such as trade mark registration so other people can't use or steal it, working out what trade mark you own, when/how the Intellectual Property was created and by whom) you can book a free 15-minute consultation with one of our expert Intellectual Property Lawyers. You can also check out our Trademark products, specially designed to add value and help you safeguard the future of your business.

In closing

Nothing in this article constitutes legal advice on which you should rely. The article is provided for general information purposes only. Professional legal advice should always be sought before taking any action relating to or relying on the content of this article. Our Platform Terms of Use apply to this article.



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