What Makes a Strong Brand (from a legal perspective)?

In order to be validly protectable as a registered trade mark, the mark (such as the brand name or logo) you are seeking to register should be distinctive.

It should not be:

  • descriptive
  • deceptive
  • contrary to public policy or morality
  • a protected emblem
  • applied for in bad faith

 

These five grounds are known as “absolute” grounds for refusal of registration of a trade mark. The UK Intellectual Property Office and the Office for the Harmonisation in the Internal Market will refuse registration of a trade mark which does not satisfy absolute grounds. Also, trade marks are open to any third party to challenge the validity of a trade mark at any time by arguing that it was applied for in breach of these absolute grounds.

In addition, owners of existing registered trade marks would be entitled to object to the registration of your trade mark if your trade mark is:

  • identical to their earlier registered trade mark for identical goods or services;
  • identical or similar to their earlier registered trade mark for identical or similar goods and services and there is a likelihood of confusion;
  • identical or similar to their earlier mark which has a reputation the use of which would take unfair advantage of or be detrimental to the distinctive character or repute of their earlier mark.

 

These three grounds are known as “relative” grounds for refusal of registration of a trade mark. Owners of existing registered trade marks would also be entitled to oppose the registration of your trade mark where they can show that its use would amount to passing off of their own earlier mark.

For the above reasons, from a legal perspective, an unusually and distinctively composed or entirely novel mark will be much easier to register and, thereafter to protect and enforce compared to a generic and/or descriptive mark. Of course, there may be commercial drivers behind the choice of brand which outweigh the legal considerations.

We also generally recommend that “clearance searches” are undertaken prior to filing or commencement of use of a new trade mark to seek to identify any existing trade marks whose owners may object on relative grounds to the use or registration of your proposed mark or expose you to possible trade mark infringement actions.

For more information on opposition proceedings, please refer to the Infringement and Enforcement section.

Next – Clearance Searches