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The Challenges of Descriptive Brand Names
It is important that brand owners be aware of the trademark registration process when choosing a new brand name. Not only should a brand name address the commercial needs of a company, it should also satisfy the legal requirements for registration. To qualify for registration, a trade mark needs to be distinctive so that consumers can easily identify the trade origin of products or services, say David Flynn and Mary Bleahene of FRKelly - Ireland’s leading Intellectual Property firm.
There are many types of brand names which do not qualify for trade mark registration and these include “descriptive” trademarks. A trade mark is considered descriptive if it has a meaning which will be immediately perceived by consumers as providing information about the goods and services on offer. For example, the mark DetergentOptimiser was refused registration for washing machines (laundry machines / dishwashing machines), the mark ELITEPAD was refused registration in respect of tablet computers and the mark Original Eau de Cologne was refused registration for cologne.
All of these trademarks provide immediate information about the goods being sold. The rationale behind forbidding registration of descriptive trademarks is that purely descriptive terms should be left available for all traders to use. However, it should be noted that trademarks which are merely suggestive of the goods or services are generally protectable.
Trade marks which attribute quality or excellence to the products or services on offer are also unregistrable because they are considered descriptive in a laudatory sense. Examples of laudatory terms include “Finest”, “Prime” and “Deluxe”. The reluctance to permit registration of laudatory trademarks is based on the belief that the customer will view the mark as a promotional or advertising term which describes positive aspects of the goods, rather than as a trade mark denoting trade source.
If a brand owner is concerned that its trade mark could be refused registration because it is descriptive / laudatory, the crucial question is whether the mark provides immediate information about the goods or services of interest.
If there is no direct and concrete connection then the mark should be able to be registered. Therefore, brand owners should make efforts to adopt brand names which are distinctive and do not describe characteristics of the goods or services e.g. Amazon for books, Starbucks for coffee or Apple for electronic goods. Non-descriptive trademarks are generally the most desirable brands and are much easier to protect and enforce than descriptive names.
Written by: Mary Bleahen, FRKelly – European Patent and Trademark Attorneys
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