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At first glance, the subject of trademark eligibility seems obvious: only company and product names can be trademarked. But the reality is much more complex. Knowing exactly what intellectual property (IP) can be protected by a brand is essential for any creator or organization looking to promote and defend their brand identity.
The power of a strong brand cannot be overstated. The right brand, whether it’s the iconic three-point badge of Mercedes-Benz or the eye-catching “swoosh” of Nike, can forge a lasting emotional bond between brand and customer.
If you are considering turning your brand elements into trademarks, it will be extremely helpful to refresh your memory to know exactly which IP assets qualify for such protection. As is often the case in this area, it is important to be particularly attentive to the differences in law between jurisdictions.
What can be filed?
A trademark (or service mark) serves to identify a brand in conjunction with one or more of the goods or services it offers. Logos, words (including product or service names), slogans, letters, abbreviations, numbers, multimedia signage, packaging designs, sounds, and even smells can all be trademarks. of commerce – so long as they meet the relevant jurisdictional eligibility criteria.
Basically, a fragrance is only eligible for trademark protection if it does not perform a practical function in a good or service. This is why the scent of a perfume or air freshener cannot be trademarked – it is an integral part of the product rather than an identifier of it. .
Although the specifics of the law vary from place to place, the following conditions are very common and must be met for a trademark to be registered:
- The mark must be distinctive and original in order to distinguish the commercial origin. For product or company names, it is often best if they are either suggestive or arbitrary. Suggestive marks allude to a product without explicitly defining it, eg “AIRBUS”, while arbitrary marks have no relation to the deliverables in question, eg “MARS” for food.
- The trademark must apply specifically to one or more goods or services, as detailed in the trademark application you submit.
What cannot be deposited?
Just because something can be copyrighted or patented doesn’t mean it can’t also be trademarked. Intellectual property rights are not mutually exclusive and may overlap as long as the subject matter meets their various eligibility criteria. However, different forms of intellectual property have their own purposes and therefore, the accumulation of trademarks with other forms of intellectual property rights would be a kind of redundancy for most companies, but not all.
As for a logo, product name or other asset that, in a vacuum, has the potential to become a trademark, there are still certain provisions that could prevent its registration:
- Description / lack of distinctiveness: Terms that literally describe the items as they are (“tomato”, “beer”, “copper” or any other common word) cannot be trademarked as they must be reserved for general use. Similarly, marks that do not indicate a particular commercial enterprise to consumers will not be registered.
- Risk of confusion: If your unregistered mark is sufficiently similar to a registered mark currently used to represent the same goods or services that you provide, it cannot be registered. However, an unregistered mark associated with entirely different goods from a similar registered mark would not be rejected out of hand, although an examiner might still view this negatively.
- Use of official government images: Words, names or images directly associated with a government – or, in the case of the EU, a coalition of states – cannot be registered.
- Deception: A mark liable to create consumer confusion, unfair competition or to mislead the public can never be registered as a mark.
- Vulgarity or rudeness: Terms or visuals considered by the general public to be obscene or offensive, as well as those that would deliberately insult specific groups of people, are generally excluded from trademark registration. Signs contrary to public order – such as those promoting the recreational use of drugs – are also prohibited.
It is generally difficult in many jurisdictions to obtain trademark rights to full proper names. However, surnames may sometimes be registered in cases of long-established brand importance and secondary meaning, such as Disney, Ford, or Chanel.
Notable Jurisdictional Differences
The precise answer to what can and cannot be trademarked may also depend on where you are trying to register a trademark. For the most part, the standards outlined above are valid in the vast majority of countries, but it is always essential to familiarize yourself with the specifics of the law of each jurisdiction in which you are seeking trademark protection.
Thorough knowledge of local laws is essential when filing for protection in multiple jurisdictions. Success or failure in one jurisdiction does not guarantee the same result in another.
Here are some of the most interesting regional distinctions related to brands:
- In the United States, a June 2019 Supreme Court decision challenged the standard that “offensive” words could not be filed. The Court ruled that a recording ban that “discriminates on the basis of point of view” conflicts with the First Amendment’s protection of free speech. Thus, the name of the clothing company FUCT could not be refused registration by the United States Patent and Trademark Office (USPTO) on the grounds that it was “immoral and scandalous”. This puts the country at odds with most other nations.
- Although you are not required to put a mark into immediate commercial use to secure its registration, many countries will require you to state in your application whether or not you will use it in current commerce. The European Union Intellectual Property Office (EUIPO) does not ask this question and will register a mark that is not immediately used in commerce. However, if not used within five years, the owner’s rights could be revoked.
- Most countries offer stronger protections to marks that can reasonably be considered “well known”, even if they are not registered. Having said that, it is always wiser to apply for registration, as it takes some time for a mark to meet this requirement.
- Although the United States only considers them in special circumstances, France and a number of other EU states have opened up protection for unconventional marks such as holograms.
Of course, there are many more variances where these come from. As stated earlier, in-depth regional knowledge is essential.
Strengthen your brand
If you want to protect your trademarks in Europe, you can apply for national or European trademark registration (EUTM) or opt for both. It should be noted that national marks in EU member states are less likely to be refused registration than EUTM applications. As such, it may be prudent to apply for a national trade mark first and then submit an offer for an EUTM. You can still complete your protections by entering the Madrid system offered by the World Intellectual Property Organization (WIPO).
After registration, maintenance becomes the priority, and an experienced trademark attorney is essential in this regard. This is where Dennemeyer’s experts can be particularly helpful, ensuring that renewal dates are not missed and that all periodic trademark filing requirements are met. Our team will employ decades of expertise to register your trademarks and protect them from counterfeiting and other perils of the intellectual property world.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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