Trade marks form the framework around a product. They create a sense of orientation, identification and association in the minds of consumers. For the vendors, they are integral to the brand’s image and serve as quality labels. From a marketing point of view, a trade mark should evoke emotions. According to neurological studies, trade marks that speak to the ‘reward centre’ of the brain are evaluated particularly positively. As you can see, trade marks fulfil a variety of tasks and it’s necessary to strike a balance between these different needs.
What makes a strong trade mark?
A ‘strong’ trade mark not only conveys qualities and characteristics, it also has a good chance of being protected.
If a creator of a trade mark wants to attain a high level of individuality, applying for trade mark protection is an opportunity to guarantee this uniqueness. To do this, the trade mark developer has to meet additional requirements. On the one hand, it’s important to create a (strong) distinctive sign which consumers can easily recognise and which evokes the most positive associations possible. On the other hand, the chosen terms should be eligible for protection. The fine art of naming a trade mark brings these two requirements together.
Not everything can be registered as a trade mark, regardless of how creative it may be. The Trade Mark Protection Act (TmPA) lists the reasons why a trade mark cannot be registered. A trade mark may not be misleading, it may not be contrary to public morality or policy and it may not belong to what is known as the public domain.
All words or word combinations that describe any characteristic of the designated goods and or/services are part of the ‘public domain’. The determining factor is what the sign will protect. So, for example, the word ‘apple’ cannot be protected as a trade mark for jam or for essential oils because the word ‘apple’ suggests that these goods might include a particular ingredient or scent. For a computer, however, ‘apple’ does not describe any characteristic of the product, which is why the word can be protected for these goods.
Trade mark law and marketing pursue opposing goals. The marketing approach is to find signs that are self-explanatory and can be quickly understood so that consumers can rapidly identify them. As a result, the chosen expressions often describe values or characteristics. In contrast, trade mark law prohibits the monopolisation of descriptive indications. How do we reconcile these seemingly diametrically opposed positions? The solution is to choose symbolic terms like “Mammut”, “Nike”, “Visa” or “Red Bull”. These expressions do not directly describe possible characteristics of the goods in question, but nonetheless, they convey associations and qualities.
Further information – developing an IP strategy
- A strong trade mark fulfils the marketing needs and can also be registered as a trade mark.
- There are various reasons why a trade mark cannot be registered.
- For example, it may not be descriptive or misleading and it may not be contrary to public morality.
- It's recommended to carry out a trade mark search before applying to avoid infringing third-party rights, for example.
Examples of grounds for refusal.