Choosing a brand name…

By March 9, 2017Uncategorized

When choosing a trade mark it is best to avoid descriptive names. For example a brand name such as “small tablet” for tablets that are small would probably be impossible to register and enforce because it is just too descriptive of the product it is used with.

The key with trade marks is to pick something that at best only provides an indirect or illusory reference to the goods. For example a brand such as “whimsical tablets” would be much easier to register and enforce because it does not deprive competitors from normal use of the English language when it comes to describing their products. This is because one would not normally say that a tablet is “whimsical”.

The next thing to look out for are trade marks that are the same or similar. If two trade marks are too close in terms of appearance or sound then the one which is later in time can be an infringement of the other. Trade marks usually need to be for similar goods or services before there is a conflict, but there are exceptions to this.

Assessing two trade marks for an infringement risk is not an exact science and really does depend on all the surrounding circumstances. For example in New Zealand the trade marks BAUER and EDDIE BAUER have been held to be sufficiently different for clothing. So have ELEMENT and TRACE ELEMENT. It did not matter that the ”two word” trade mark subsumed the ”one word” trade mark. However this is not a hard and fast rule and some cases involving a subsumed trade mark have been decided differently.

Generally speaking, the more unique or well known the trade mark is the harder it is for competitors to get near it. Invented words are generally the easiest to register and enforce but of course in some cases more regular words are preferred for marketing reasons. So the key when it comes to devising a new trade mark is to pick something that is not too descriptive and is at the same time sufficiently different to other brands.

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