Can I get trade mark protection for the name of my organisation?
Written by Rehana Ali on 14 January 2014« Return to Reading Room
Registration of the name of an organisation is subject to the usual trade mark registration rules however consideration of the following provides useful guidance if you are considering registering the name of your organisation.
Section 3 1(c )of the Trade Marks Act 1994 prohibits the registration of a mark that describes the goods or services attached to it, however an important rule to remember is a mark that describes the nature of an organisation is not excluded from registration.
Capable of distinguishing
Section 1 of the TMA 1994 states a mark must be capable of distinguishing goods or services between traders, therefore the inclusion of a distinctive name is very likely to be required.
Using a word logo/image combination
Including the words, institute, society, foundation and association usually mean that the name describes the organisation and not the services provided but care must always be taken to avoid the mark from becoming descriptive.
An example of a mark very likely to be refused registration may be illustrated by a word only mark of ‘national repair’ for vehicle recovery services across the UK, this mark simply describes the geographic area covered and the type of service offered.
Practical examples of successful registrations for the name of organisations may be illustrated as follows:
- The CTM registration of ‘ZAHAL DISABLED VETERANS ORGANISATION’: this organisation provides help and advice for war veterans, the service provided by the organisation is not included in the mark, and the mark also contains a distinctive name.
- Google: we all aware of Google’s services, again the mark is in no way descriptive of the service provided and the name is very distinctive.
- The Church of Christ, Scientist: the name does not include the services provided and the inclusion of Scientist may serve distinguish this particular Church from others.
- Church of the Creator (combined with a logo): This particular CTM consists of a word logo combination, giving it distinctiveness.
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