United Kingdom Trade Mark Law - Registrability of A Trademark

Registrability of A Trademark

Some of the main objections that the UKIPO will make when trade marks are submitted for registration are usually related to the 'distinctiveness' of the mark.

An inherently distinctive mark is the easiest to register, as it has no prior meaning. These marks are not to be found in dictionaries. A good example of such a distinctive trademark is iPod.

Words that appear in the dictionary can still be registered. These arbitrary trade marks are meaningless in the context of their use. For example Apple Computer, or Apple Corps.

Suggestive trade marks do not describe a characteristic of the product, but with some imagination, are identifiable with their connected product. For example, ColdSeal windows.

Descriptive marks use words that appear in the dictionary that describe the product to which they relate. They are usually difficult to register, and the registrar needs to prove that the mark has become distinctive through its long term use. An example of such a descriptive mark is 'Brand Protect', a brand belonging to the leading intellectual property protection firm. Such a mark is said to describe the service in which the firm specialises.

Descriptive marks can be made distinctive by the addition of other elements to the name or logo. For example, the words ‘Brand Protect LLP’ written alongside the firm’s distinctive ‘elephant’ logo collectively could be described as distinctive, as this combination is unique to this firm.