Trade Mark Registration - Do's and Don'ts
Clover® has handled numerous trade mark registrations. Here is some advice that we have developed based on working with clients.
DO consider whether you will be expanding your products and services
Trade marks are registered for specific pre-determined categories. Therefore, a trade mark for clothes will not necessarily prevent someone else using a similar mark for chemicals. It is better to think ahead so that you can get the protection needed rather than having to do future registrations.
DO think about where else you want to establish your business
A trademark is territorial. This means that it is only recognised in the country where it is registered. For example, a trade mark registered in Trinidad and Tobago will not be protected in Barbados unless it is also registered there. You should think about where else you may want to do business so that you can avoid the situation that Burger King found themselves in when they expanded to Australia. There was already a brand with the name 'Burger King', and as a result, Burger King in Australia is sold under the name Hungry Jack’s.
DO ensure that you have received an assignment of copyright for your logo
Contrary to popular belief, Trinidad and Tobago does NOT have a ‘works for hire’ provision in the law. Therefore, even if you pay someone to make a logo, the artist maintains the copyright in the absence of any contrary agreement. If ownership of the logo is not discussed and contracted for, you will be using the logo under an implied licence. This places you in a precarious position as your use of the logo may be limited as you do not own it. You really do not want to dispute this in court, particularly if your brand is very successful and your logo designer realises how valuable the logo is. Thus, you should secure an assignment of the copyright in the logo before using it in your trade mark. The assignment must be done in writing.
DO NOT use descriptive language
Descriptive language cannot be registered as a trade mark unless you have managed to acquire distinctiveness. An example of descriptive language is ‘Fruit Vendor’ for a fruit stall, or ‘Trinidad Tours’ for a tour guide service. This type of language is not allowed to be registered because everyone needs to be able to use this language to explain their products and services. Even if you get a logo containing the words registered, you will have to disclaim use of the descriptive terms. This leads to a thin and weak trade mark.
DO NOT use misleading language/signs in your mark
You cannot use words that indicate a property that your product or service does not possess. For example, ‘cotton’ for wood products.
DO NOT copy an existing mark
In addition to infringing copyright if you copy a logo, you will be rejected for registration if the mark is already registered. Even if you copy someone’s mark that has not been registered, the owner of the unregistered mark can object based on their prior use and may even sue you under the tort of passing off.
DO NOT use your brand as a noun or a verb
This may seem like an attractive marketing strategy, and it is. However, if your product is a runaway success, like ‘escalator’, ‘dry ice’, ‘yo-yo’, ‘sellotape’, or ‘linoleum’, your mark may become generic. This occurs where the public refers to a product by the trade marked name regardless of its origin. For example, all lifts in buildings are now commonly referred to as 'elevator' regardless of whether it was made by the brand 'Elevator'. If this occurs to your mark, it suffers genericide and may be revoked because it no longer functions as a trade mark. This is mainly a risk for patented products. Considering that patent protection is time limited, you want to maximize your trade mark protection as much as you can to extend the value of your product beyond the 20-year patent period. Check out Velcro brand’s message on genericide here.
Let Clover® help you secure your trade mark rights today so that you can reap the benefits in the future.