In the UK, trade marks that are descriptive of the nature of their goods and/or services are not registrable.
Opting for a brand name that gives an indication as to what your goods and services provide seems like the most reasonable thing to do right? Wrong. If you opt for a descriptive brand name, for example ‘milky milkshakes’, and later decide to register it as a trade mark, you will likely find that the trade marks examiner will refuse your application in accordance with the absolute grounds of refusal. The absolute grounds for refusal provided by section 3(1) of the Trade Marks Act 1994 states that marks consisting exclusively of descriptions of the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services shall not be registered.
The reasoning behind this ground is to prevent any marks from having a monopoly over a word. Note that should you decide to proceed with a ‘descriptive’ trade mark application and that application is refused under the absolute grounds, your application fees are non-refundable.
There are number of ways you can avoid applying for a descriptive trade mark. Firstly, when deciding on your brand name, you should try and come up with a name that is as distinctive or unique as possible (a good example of this is Google) – the more original your trade mark is, the stronger it will be. Secondly, the proposed mark should be capable of being distinguished from other trade marks and should not be confused for another existing mark (e.g. Mivea for Nivea). Lastly, you should ensure that the mark will not enable you from claiming a monopoly right over a generic word and/or phrase such as ‘Pizza’ or ‘Restaurant’.
Thus, in order to save both time and money, it is of upmost importance to ensure your brand name meets the distinctiveness requirement before you take the plunge with a trade mark application.
If you have any questions relating to this article of are unsure as to whether your business name will be deemed as descriptive, here at Lawdit we offer a trade mark search service which will give you an indication as to the likelihood of the examiner accepting your mark under the absolute grounds for refusal. Contact us today for more information.