I thought I would blow away the cobwebs and consider some specific questions which we are consistently asked by clients to confirm or explain. This article will be particularly aiming at specific reasons for a trade mark to be rejected, with particular consideration given to laudatory terms.
When considering the mark as a whole and those with words as opposed to a shape, whether it be the name of a business or the catchy name of goods and services to be advertised imminently, we enjoy listening to clients set out the journey they have taken when making these important decisions. It usually includes examples of them sitting for many evenings over the last few weeks with scrunched up pieces of paper as they are struggling with settling on a name.
It is important to avoid making the mistake which many of our clients have made over the years. If it is a company brand name which they have been developing (to protect), they register the name at Companies House before considering any infringement issues. However, even if our clients are lucky and are not causing too much of an issue with infringement, they move to design their logo, and start printing everything to do with their brand, again without checking that the mark is capable of being a registered trade mark. They may even start pushing out the goods and services under the brand name, before taking the necessary steps to protect the mark.
Some of our clients muster the confidence to file the mark with the intellectual property office themselves. The proposed mark is filed and they then sit and wait excitedly for that certificate to come through the door. All of a sudden, the word LAUDATORY is in bold writing on an objection letter from the Examiner. “Where did that come from?”, “What does that mean?”, “Why did I not get a search report done by a specialist!”, and “What do I do now?”…. These are all things that flood our clients’ minds. This is sometimes the first time we are engaging and asked for advice.
A mark that has laudatory meaning is more common than you may think. It is also an important consideration before deciding on a mark. It essentially relates to a mark that makes a descriptive or bold statement within the words, relating to the goods and services they provide, but in a different way to just describing the goods and services outright. An example of a mark with laudatory meaning may be a mark which may have promotional value to it. An example of this could be ‘coolest clothes around’ or ‘We are the best’ which both are statements which can be misleading. Also, the word ‘gold’ in the mark can be considered as having laudatory meaning.
I will probably be met with a few rolled eyes as you read the next bit, but we are lawyers, so I like to attempt to educate just a little, especially as case law refers to everyday businesses like our readers. An interesting case to consider which relates to gold is the ‘BONUS GOLD’  case. In this case, it was upheld that the word gold is only possible of having two uses within the financial services sector as a mark; one is used in a laudatory fashion, and the other is the obvious meaning as a precious metal or colour which naturally would attract an objection on those characteristics anyway.
This is different to the descriptive element where there are two elements that the examiner will consider for absolute grounds. The first is an application being devoid of distinctive character (example is it having laudatory meaning) and the other being solely descriptive of the goods and services. Descriptive is different to laudatory because when a mark is descriptive it is specifically stating for example ‘cars’ for cars, or ‘soap’ for soap and ‘drink’ for drink. It is an important part of an applicant’s understanding before hitting the button to file an application. For something to be distinctive, it must be unique and memorable, but remember it must also not have a laudatory meaning in the eyes of the examiner, or it will be objected at first instance.