Choosing a name suitable for trade mark protection

In this insight we highlight some key points to consider when choosing a name for your product or service.

A registered trade mark is typically a word, logo, or combination of both, that a business uses on its products, or in relation to its services, that cannot be used by another company without the permission of the registered owner. A registered trade mark is a monopoly right which lasts indefinitely (assuming the renewal fee is paid once every 10 years!).

Be distinctive

Your trade mark is important because it is how the consumer distinguishes your company’s products and/or services from those of another.

Deciding on a new trade mark can be tough. When selecting a new mark, it is worth remembering that a trade mark may be objected to if it has descriptive content or is otherwise lacking in distinctiveness.

A strong trade mark is one which is distinctive in relation to the goods and services for which protection is sought. A good example is APPLE for computers and mobile telephones. Distinctive trade marks which are totally made-up words also make excellent trade marks for example, LEMSIP for cold and flu medicines or KODAK for cameras.

Avoid descriptive names

Descriptive trade marks are usually favoured by business owners because they convey to the public the use or purpose of the goods or services offered. A purely descriptive mark is not usually registrable because of the need to keep the descriptive word free for all business owners to use.

It is worth remembering, when selecting a new trade mark, that marks are difficult to protect where they are:

• Descriptive of the goods/services to be protected;
• Deceptive in that they will mislead a member of the public about the characteristics of the goods/services provided and/or;
• Not capable of distinguishing the goods and services of the application from those of a third party

A good trade mark should be easy to recognise and enforce, whilst a bad trade mark is often hard to register and can potentially lead to disputes with third parties.

Check any regulatory issues specific to your industry

In the pharmaceutical and medical technology sectors, business owners tend to opt for semi descriptive trade marks so the public and clinicians can easily understand what the products sold under the trade mark are for whilst also recognising the trade mark as distinctive. This is also an important part of the regulatory assessment for such goods (i.e., does the brand name pose a health or safety risk or does the brand name cause any potential confusion as to its use for the public and/or for clinicians?).

Conduct a clearance search

When deciding on a new trade mark (especially in the medical technology and pharmaceutical sectors) it is important to conduct a clearance search of the relevant trade mark registers to ensure that there are no prior conflicting marks which prevent your freedom to use and register your chosen mark.

Where similar earlier trade mark registrations are identified by a search, these may present a risk of potential oppositions and, more importantly, the risk of trade mark infringement.

Clearing a trade mark for use in the pharmaceutical sector is a complex and lengthy process. Plenty of time should be factored in when considering a new mark for your pharmaceutical product to ensure there is sufficient time to conduct thorough clearance searches and to complete the registration process.

When considering a new trade mark for pharmaceutical products, it is advisable to select more than one trade mark and conduct full clearance searches on those marks. Not only do you need to clear the trade mark from an infringement point of view, but you will also need to ensure the mark is acceptable to the relevant regulatory board. Due to strict regulations on pharmaceuticals, you will require regulatory approval to sell your goods under the mark you select, and it is always best practice to have a few options cleared in case you do not obtain regulatory approval for your preferred mark.

As a business owner, you don’t want to be threatened or sued for trade mark infringement. The damage to your business in rebranding and/or the risk of damages needing to be paid to a third party could be catastrophic to your business and brand. Clearance searching is risky, and we always recommend that you engage a professional to attend to this for you to ensure that you are fully informed on the risks of launching under your new chosen brand.