Apples by Apple? Can you register your descriptive trade marks?

If you are selling Apples under the brand name “APPLE”, it is quite different from selling iPhones under the name APPLE.  This is because the word “Apple” is descriptive of the fruit,  but is not a term used to describe phones.

As a result, the people behind selling  fruit under the APPLE brand name will have no doubt been told by their trade mark lawyers that they cannot obtain a registered trade mark and we can understand why that would be the case!

QUESTION:

What if the people selling Apples under the APPLE brand name had been doing so for years?  Can they now benefit from the protection of a registered trade mark. 

ANSWER:

Probably not as it is descriptive, however it is advisable to speak to an expert – the law isn’t always black and white.

Apple TM Image

 
Taking a step back: What is a trade mark?

Well, a trade mark is any sign (a word, logo, or even things like the shape of a product) that is capable of designating the origin of the goods or services.  In short, a trade mark allows your customers to identify that products or services bearing your brand name will come from you.

Over the years, your trade mark can gather a significant following and the commercial value of your trade mark in and of itself can skyrocket.

You need to register your trade mark to give your business the greatest brand protection.

Can I register a descriptive trade mark?

One of the limitations on registering a trade mark is that you are not usually allowed to register marks that are descriptive of the goods and services it is attached to.

So, taking our example above, you would not be allowed to register “Apple” as a trade mark for selling apples.

That being said, there is a way to register your descriptive trade mark if you have used that mark and “acquired distinctiveness” as a result of that use.  You will need to provide the experts at Virtuoso Legal evidence that you have extensively used your trade mark in the market.

Virtuoso Legal, Trade Mark Specialists

If you need help applying for your trade mark, our trade marks specialists would be happy to guide you through the process. We have extensive experience in trade mark registrations all over the world, including filing for descriptive trade marks on an acquired distinctiveness basis.

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