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    1 Reply Latest reply on May 24, 2011 3:31 PM by BossLadyWhite

    CHOOSING THE RIGHT TRADEMARK – A LEGAL ASPECT

    Lynn Newbie

      The choice between investing time and research in carefully selecting just  the right brand name or trademark to perfectly represent one's business or the  easier alternative to rush to the market without adequate time and research  almost always divides the feeble luke warm businesses that will never amount to  anything from the enterprising, flourishing ones.  The concept of branding  although widely proclaimed from a creative aspect completely collapses if it  fails to pass the fundamental legal test, a test that every single business  owner will face at some point in the lifespan of his business.  It is essential  that you know that your brand will definitely and absolutely be scanned at the  legal barrier, be it at the time of a trademark registration or at a  competitor's fancy. The more successful you are, the sooner you will be on the  legal radar and the longer it takes, the more perilous for you. The business  that you were so eager to take to the market will be valued at zero if the brand  name advertised, marketed and sold to public for all those years is considered  legally worthless and you are ordered to stop all sales, advertising marketing  of your product using that name. You will have no option but to start from the  beginning or more realistically, being so late in the day, shut down and claim  bankruptcy.

      Most brand consultants are aware of the selling capabilities, the advertising  tactics, the marketing strategy etc. to ensure the public is made aware of you,  your brand and your product. Not many inform you that all of the above will be  insignificant if your brand name or trademark does not adhere to the  international rules of trademark law and many consultants are not even aware of  these laws. Each country has a trademark office and an enactment on trademark  law. If you are starting your own enterprise, your legacy, it is advisable that  you obtain a copy of the laws in your country and read it. You could always  retain the services of trademark attorney or contact the trademark office  directly if you require more information. Below is a quick study of what not to do when choosing the most important  personality defining your business - your brand name.

       

      DESCRIPTIVE OR GENERIC TRADEMARKS: Never choose a name or trademark that  describes your product or service. For example, if you are in the mobile phone  industry, your trademark absolutely should not have the words or a descriptive  logo of a mobile phone. The name Mobile Phone Manufactures, Mobile Technologies,  Phone Call Service Provider etc. is a big NO. Geographically descriptive names  also fall under this category. For example, ‘India's Best Rice Provider' or  ‘Florida Wine County' are geographically descriptive names. Descriptive or  generic names are WEAK. They will be rejected by the trademark registry in any  country. They will not hold value in any court of law and you will have only  limited protection, if any, for such trademarks.

       

      CONFUSINGLY SIMILAR: Your trademark, logo and brand name must not be  confusingly similar in the eyes of an ordinary consumer to another's  trademark. The key word is ‘similar' not ‘same'. If a consumer is likely to  assume that your trademark and the other trademark are from a common source,  your trademark, the later trademark, will be WEAK and will be cancelled in favor  of the other prior trademark. You need to ensure that a trademark search is conducted for all your potential brand  names. You can do it yourself at the trademark office website or send a request  to the Trademark Registry for a search report. All registered trademarks are in  the Trademark Register. Any Trademark  attorney will be able to conduct a trademark search as well. The important  criterion to watch out for is that the marks must not be similar in appearance,  in sound and in meaning. The goods and services of the products or services must  also not be similar or travel in the same channels of trade and marketing.

       

      SURNAMES: Try and avoid using surnames as your brand or trademark. Surnames  are WEAK trademarks unless proven distinctive. Distinctive trademarks are proven  by showing commercial usage of the name for five (5) years or more and proof that the general public associates your name with your  product/service.

       

      INTERNATIONAL & NATIONAL EMBLEMS, SYMBOLS, NAMES:  Such names cannot be  used per se, regardless if it is used on a different product or service. This  includes any seals, insignia, badges, decorations, medals and characters of any  government or international organization

       

      ORNAMENTAL OR DECORATIVE TRADEMARKS: Such marks are not considered trademarks  as they are merely decorative or ornamental and not capable of distinguishing  ones' product from another. An ornamental pattern on the picture of jeans was  not considered as a trademark.  It was only considered decorative.

      SCANDALOUS OR OBSCENE MATTER: Any trademark or name that is considered  immoral, indecent or disrespectful in accordance with society and moral norms  will not be a considered as a trademark.

       

      CHEMICAL ELEMENT OR ANY SINGLE CHEMICAL COMPOUND (AS DISTINGUISHED FROM A  MIXTURE) IN RESPECT OF A CHEMICAL SUBSTANCE OR PREPARATION: In India, a name of  any such chemical cannot be used as a trademark to distinguish a business even  if it is for unrelated goods and services.

       

      USE OF NAMES AND REPRESENTATIONS OF LIVING PERSONS OR PERSONS RECENTLY DEAD:  It is advisable not to use the names of any living persons as a trademark as the  trademark registry would require written consent from such person before  registering such mark. Also names of persons recently dead should not be used as  trademarks.

      FAMOUS TRADEMARKS: Famous marks are distinctive and hence cannot be used even  for unrelated products. The best example is the case of Apple Inc. v.  The Victorian School of Business in Canada.  Apple Inc. sued the school  for using a similar logo. Apple Inc. argued that it has acquired distinctiveness  and usage if the Apple trademark or similar trademark dilutes Apple's brand  value regardless if it was used for unrelated activities.

       

      The lesson to be learnt is do not try and copy any famous mark or logo for  according to the laws of trademark dilution, a famous mark is distinctive and  hence the owner has the right to prevent others from using that mark in a way  that would lessen its uniqueness.