Spoonfeed: About Distinctive Character (of a trademark)

1. This is just a quick post on the concept of "distinctive character" re trademarks and is targeted at non-IP practitioners. 

2. Recently, Booking.com appeared before the Supreme Court to argue that it should be allowed to obtain a trademark registration for "booking.com". It befuddles me, somewhat, that many brands choose to adopt very generic and descriptive names as their brands/trademarks. 

3. I can see the advantages of doing so, in the sense that a very generic and descriptive name leaves no doubt as to the function/nature of the goods/services being offered. For example, I am left in no doubt as to the nature of a product labelled "Tasty Salt and Vinegar Chips" which I find in the supermarket. Likewise, the meaning of "booking.com" is so clear to a consumer that they would immediately understand the nature of the services being offered on the website (i.e. that the website is to "book" things).

4. But herein lies the issue - I believe it is much more difficult for a brand to develop an identity in and of itself, if the brand itself is generic and descriptive in relation to the goods/services offered. Suppose that "Tasty Salt and Vinegar Chips" became very popular, and people wanted to share the news of this particular potato chips with others. I can imagine that the conversation may go like, "hey, you should check out this brand of potato chips...it's called tasty salt and vinegar chips". "tasty?" "yeah, it's just called tasty salt and vinegar chips, you should be able to find it...". "tasty? i see a few other brands that have the word tasty on the label as well"...See where the conversation would lead to?

5. As such, for a brand to develop an identity of its own, I would certainly argue that it's important for the brand to convey a concept or meaning that is totally separate from the product or service itself. That way, the brand conveys an independent meaning to the consumer that signifies the brand and only the brand. Repeated reinforcement of that brand then continually imprints that meaning in the minds of consumers.

6. And here is where trademark law comes in.

7. For a trademark to be registrable in most jurisdictions, it must possess "distinctive character". This is really just legal speak to describe a trademark which would be perceived by the relevant consumer of the goods and services as an "indicator of origin" of the goods and services. 

8. Looking around you at the brands that are in the market, you would already note that certain brands are more likely to be perceived as an indicator of origin compared to others.

9. Where a word is invented solely for the purpose of being a trademark (the word "VOLVO" for example, or "ROLEX"), consumers would immediately perceive that word as indicating the origin of the goods and services i.e. as a brand. There is no other purpose of the word. As such, invented words possess the greatest distinctive character.

10. Next up, where a word is arbitrarily used i.e. it has an actual meaning but the meaning is not related to the goods and services, the word also has distinctive character. The most famous example would be the word "APPLE" used in relation to computers and handphones. Of course, the word "APPLE" is descriptive if you were to use it as a trademark in relation to a fruit shop - if a trader were to use the brand "APPLE" as the name of a fruit shop, people would think that the shop only sold apples. However, the use of "APPLE" is arbitrary when it comes to computers and handphones - the decision to use the word "APPLE" instead of something else like "PIANO" or "PEAR" for the brand name of computers and handphones is arbitrary, which is why it can also function as a trademark.

11. Thirdly, you have suggestive marks which suggests some aspect of the nature or function of the goods/services without exactly or directly describing it. These may require some thought or imagination to identify the meaning. These marks may also be registered. For example, "MICROSOFT", "COPPERTONE". However, the line between what is suggestive and what is descriptive (see below) is sometimes hard to draw.

12. Fourthly, you have descriptive marks, which are marks which describe the nature, quality, quantity, purpose, value, or other characteristic of the goods and services. These marks are not distinctive and may not be registered. For example, "HAZELNUT" used in relation to chocolate would be descriptive as describing that the chocolate contains hazelnuts or is of a hazelnut flavour. Under Singapore law, such marks may be registered only if the proprietor can show that the marks have been used in the marketplace such that consumers now rely on the mark as a badge of origin. It is a particularly difficult bar to cross especially if the marks are very descriptive.

13. Finally, you have generic marks which actually refer to the common name of the goods i.e. trying to register "CHOCOLATE" for chocolate products. For such marks, even if there were extensive use of the mark in commerce, it is perhaps unlikely for the mark to be able to acquire any form of distinctive character.

14. Thus, owners of companies and branding specialists and consultants should, where possible, choose trademarks which are invented, arbitrary, or suggestive. Not only would these trademarks have greater branding power (see point 5 above); also, it is far easier to protect these trademarks via registration.

15. I hope the above helps! If you need more information, you can always contact me and I would be happy to provide an initial free consultation if required.