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How can descriptive Trade marks become registered Trade marks?

Written by Ellis Sweetenham on 16 January 2015

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Without their well-known logo or recognisable company name, the UK would not be as commercially driven as it is today. You only have to mention the famous technology brand named after a piece of fruit or have to get out your favourite triangle shaped chocolate bar and the brand is so ingrained into society that it is instantly recognisable by almost all over the country and by all ages. This is such a powerful tool for business that it is crucial for businesses to protect any logos or new products that can become necessities in today’s world. It is also essential that any trademark that a business wants to register has the best chance of succeeding.

A key reason why many applications fail is due to the lack of distinctiveness. Any Trade mark that is too descriptive of the type of product or the product market that it will be sold in is not allowed to be trademarked using the 1994 Act as the courts feel this is unfair to future developers of similar products in the same retail area. One person should not be able to monopolise on words or phrases that represent that product. If a Trade mark was put forward for application and found to be descriptive, it would be refused under section 3(1)( c) of the Act.

As with the majority of legal rules, there is an exception. If an applicant can prove that, through the use of the Trade mark, it has gained distinctiveness within the retail market. This means that a previously refused Trade mark that was ruled to be too descriptive can be accepted if it can be recognised by consumers as coming from that specific company or relating to a specific product. This principle can be very useful to many businesses that have built recognition in a logo or phrase that is linked closely to the market it features in or could allow previous cases that were refused application, resubmit their application for a better result.

 

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