For a trade mark to obtain legal protection it needs to be deemed ‘distinctive’.
This means that it must not simply ‘describe’ the goods or services that it intends to cover. Examples of descriptive terms could be the words ‘Fresh’ to cover ‘perfumes’ or the word ‘Chewy’ to cover ‘chewing gum’.
Some trade marks are inherently distinctive. Inherently distinctive trade marks are usually creative, thus avoiding any description of the related goods and services (think about the ‘APPLE’ trade mark which is completely unrelated to the IT related goods/services it offers).
Descriptive trade marks can, however, become distinctive. This is where a mark’s ‘secondary meaning’ comes into play. When consumers have come to identify a trade mark with a certain product over a period of time, that trade mark has acquired ‘secondary meaning’. When this happens, a descriptive mark that a business or individual would not have been able to register at first could achieve trade mark status. The descriptive trade mark may be subject to registration after adequate use in commerce has been made to prove that it has obtained a ‘secondary meaning’.
An example of a term that has acquired a secondary meaning is ‘Holiday Inn’®. The words holiday and inn can both refer and mainly describe hospitality/hotel services. But today, after many years of use in the marketplace, the trade mark Holiday Inn® has acquired a ‘secondary meaning’ because the consuming public associates Holiday Inn® with its producer and not with hotel services in general.[1]
Top tips for your trade mark
- If you have not chosen a trade mark yet for your business, make sure it is not directly descriptive of the goods and services you are offering so as to avoid issues during the application and registration process.
- If you have already chosen a trade mark and have not been able to register it because it is descriptive, you may be able to show that it has acquired a ‘secondary meaning’ through use in the marketplace.
