Probably, Should’ve Gone to an Expert!

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One of the frequent questions we’re asked concerns what is or isn’t registerable or indeed useable as a trade mark or design right. Marketers, designers and brand managers often come up with some incredible creative content and then wonder how protectable it is; or whether or not it will land them in hot water as they’ve used other people’s brands as part of their story.

An example of great comparison adverts are the Aldi TV campaigns that use some interesting comparisons such as the Easter campaign with the Lindt chocolate bunny versus Aldi own brand chocolate rabbit. This kind of comparison works well but brand owners have to be aware of the limits of such use.

The fundamental rules include that you mustn’t confuse the consumer or make the comparison so difficult to understand that the consumer can’t readily compare like with like. The rules over comparison include the Trade Marks Act 1994 (TMA) and the rules of governing bodies such as the Advertising Standards Authority (ASA) or similar regulators. It can and is a bit of a mine field.

Similarly one of the other common elephant traps for brand creators is where the brand is descriptive, laudatory or offensive. A descriptive trade mark would be one where the brand merely describes the business – Office Cleaning Services for example would be almost impossible to register per se. First Class Lawyers would be an example of a laudatory term which would be rejected. French Connection also had their FCUK trade mark rejected on the grounds that it was offensive.

The registry also regularly rejects applications for things such as Bin Laden, Swastikas or Jesus on the grounds of public policy.

Whilst it is sometimes possible to obtain some trade mark protection for all the above, it invariably involves advice from experts as to how to get cover that will satisfy the rules of the Trade Mark Registry and provide effective enforceable trade marks. In some instances people will file stylised marks (i.e. not a plain word mark which provides the broadest type of cover) to overcome objections from the trade mark registry that something is merely descriptive.

However, such marks are of limited value and can be difficult to enforce. In some circumstances it is possible to show certain evidence to the registry that the use of some terms are in fact distinctive of themselves. So for example Spec Savers have applied to register the word “should’ve” as a trade mark and Carlsberg registered “probably” as a trade mark in 2010. Carlsberg now widely use the word probably as their trade mark as the phrase is so well known by the public as distinctive of Carlsberg lager.

Whilst it is possible to register your own trade marks using the Trade Mark Registry’s own guidance, we do see clients who often get both the specification and the actual trade mark wrong. These issues arise as they try and protect the mark from infringers. If you need to go to an expert you probably should’ve gone to Virtuoso Legal!

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