What kinds of trademarks can and can’t be registered?

 

The main requirement is that your trademark must be unique and original and it must distinguish you from your competitors. A word, phrase, symbol, logotype and/or combination of these are acceptable while creating a trademark. In some jurisdictions (e.g. the European Union) the list may also include sounds, colors, patterns, holograms, motions multimedia and other categories of marks that can be registered and protected.

Your trademark can’t be offensive, describe or be over suggestive to the goods or services it will relate to, be misleading, be too common or non-distinctive, look too similar to state flags, hallmarks, and other similar symbols. In some countries, a word trademark will also have to comply with official language requirements and may not be protected where used as a slang etc.

A trademark must be distinctive. The distinctiveness of a trademark means that the sign serves to identify the product and/or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings. The distinctiveness can be assessed only by reference first to the goods or services in respect of which registration is sought. That is why, a word “Apple” is distinctive for such goods as computers, but it would not be distinctive, for such goods as fruits.

Words are non-distinctive and cannot be registered as trademarks if they are so frequently used that they have lost any capacity to distinguish goods or services. For example, such single words like: MEDI as referring to ‘medical’, MULTI as referring to ‘much, many, more than one’, UNIVERSAL as referring to goods that are ‘fit for general or universal use’, does not have distinctiveness and cannot apply as a mark.

Also, it cannot be descriptive. A sign must be refused as descriptive if it has a meaning which is immediately perceived by the relevant public as providing information about the goods and services applied for. This is the case where the sign provides information about, among other things, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services. The relationship between the term and the goods and services must be sufficiently direct and specific. In the European Union, a trademark is descriptive if it is descriptive in any of the official languages of the European Union, regardless of the size or population of the respective country.

The following signs we found to be descriptive: ‘bank’ for financial services, 24/7 for services; ‘2000’, which refers to the size of the motor or ‘75’, which refers to the horse power (kW) of the motor.

A new registered mark should not be confused with earlier marks. Marks are always compared visually, aurally and conceptually. If the comparison is positive, there is a similarity between the signs. If the goods and services of both marks are also same or similar, there is a likelihood of confusion for the relevant consumer, and the registration of the later mark will be rejected. Examples of marks that are identical or highly similar: IDRIVE and iDrive (case T-105/14); HERBO FARMA and HERBOFARM (case R 1752/2010- 1); BABIDU and babilu (case T-66/11).

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