Trade Mark Trip–Ups!

In this article we look at a couple of mistakes brand owners sometimes make when adopting a new trade mark.

Failure to search

All too often stories hit the headlines of companies adopting trade marks, spending thousands of Euros on packaging, publicity materials and marketing, only to have to re-brand when challenged by the owner of an existing right which they are infringing. For instance, earlier this year the Kardashian sisters launched a cosmetic product under the name KHROMA only to find that the Trade Mark KROMA was already registered by a third party and the product had to be withdrawn. To avoid wasting time and money, the brand owner should instruct a trade mark attorney to conduct a trade mark clearance search. As the old saying goes ‘a stitch in time saves nine’ and the small cost involved in taking this action could potentially save tens of thousands of Euros as well as avoiding a loss of face and goodwill with customers.

Weak trade marks

The usual temptation for designers or brand owners is to adopt words which describe the product or service. However, to be registered as a trade mark and thus secure exclusive rights in the trade mark, the mark must be distinctive. Signs which are descriptive (e.g. BIG BURGER) or laudatory (e.g. GREAT VALUE) of the goods and/or services in connection with which they are to be used or signs which are commonly used in the trade cannot be the exclusive property of any one entity and would therefore be denied protection.

A trade mark is any sign which identifies the owner as the source of a particular product or service. It can be a word, a logo, a slogan, a colour, a noise, a gesture, a smell or a combination of these. When deciding on a new trade mark think about inventing a word or using dictionary words which have no bearing on the product or services and would therefore be distinctive of them. Look to history, fiction or to myths and legends for inspiration. Think PEPSI for cola, APPLE for computers, NIKE for clothing and footwear and PICASSO for cars,

A trade mark can be a company’s biggest asset. In 2012 the Coca-Cola brand was valued at US$77.8 billion. Adopting a trade mark is not something which should be done with little or no thought and failing to invest in securing a trade mark registration is a mistake which could be very costly.

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