Q) My Oxford based company specialises in security software. We have built up a good reputation in the area and I want to trademark my company’s name. The name includes ‘Oxford’, I think it means a lot to our customers to know that we are a local company, and it is part of our reputation. However I have heard that it is difficult to use a descriptive word in a trademark. Would it be possible to use the name of the city in my trademark and, if not, is there any way around this?
You are right that trade marks cannot be descriptive. The primary role of a trade mark is to distinguish the goods and services of one undertaking from those of others. Trade marks which cannot perform this function cannot be registered. A word which is purely descriptive of the goods or services in question cannot, generally, enable consumers to identify their origin.
Under the law, signs which serve to designate various characteristics of goods and services will be refused registration. One of these characteristics is the geographical origin. The good news is that place names are not automatically refused in spite of this apparent prohibition. The general rule is that if a place has a reputation for particular goods or services, no one trader should have a monopoly on its name. Oxford certainly has a reputation for education but may not be well known in the field of security software. If that is the case, your mark may be registrable.
If Oxford does have such reputation, all may still not be lost. You say your mark is not "Oxford" alone and it is the mark 'as a whole' which will be considered. Also, you say your mark has 'reputation'. Marks which have 'acquired distinctiveness through use' may be registered in spite of apparent descriptiveness and evidence to prove this will be needed during the application process. All in all, you should certainly not assume that just because your mark includes a place name it will be impossible to protect it.
First published in the Financial Times, September 2012