THE IMPORTANCE OF BEING DISTINCTIVE – VICKY PLUMPTON

Friday, March 31, 2006
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The function of a trade mark is to distinguish the goods or services of one person from the same or similar good or services offered by another. This purpose is clearly set out in the provisions of section 9 of the Trade Marks Act 194 of 1993.  It would seem that this purpose is often forgotten or perhaps even unknown to many people who are charged with the task of branding a new product or service.
 
From a marketing point of view it seems that the most common way of branding a product is to use a name that describes to the consumer exactly what the product or service is. It is, of course, important to let the consumer know what it is he’s buying, because after all, if he doesn’t know what it is, he probably won’t buy it. On the other hand, branding a product by giving it a name that describes it is not advisable from a trade mark point of view.
 
In terms of the Trade Marks Act of 1993, in order to qualify for registration, a trade mark must be capable of distinguishing the goods or services in relation to which it is used, from the same or similar goods or services sold or offered by competitors. There are two manners in which a trade mark may be “capable of distinguishing” – the mark in question must either be inherently distinctive, or it must have acquired the necessary ability to distinguish as a result of use. Trade marks which consist entirely of matter that is descriptive, common, generic or necessary for use in the particular industry concerned, will generally not be considered to be inherently distinctive.
 
When selecting a brand name for a new product or service, a conflict often arises between the need to let the public know what is being offered and the requirements of the Trade Marks Act that must be met in order for a trade mark to qualify for registration.
 
Although from a trade mark perspective, it is not advisable to use a descriptive phrase or sign as a means of indicating that certain goods or services emanate from a particular source, it is possible to achieve a compromise between the need to tell the consumer exactly what the goods or services are that you are offering on the one hand, and the need to distinguish those goods or services from other goods or services of the same kind that are produced by competitors, on the other. If it is necessary to inform the customer of exactly what the goods or services are that you are offering, it is often an option to use descriptive matter in conjunction with something else which makes the mark stand out and, and which therefore distinguishes the goods or services on offer from those of competitors, for example by adding a picture or logo to the mark, or by using the mark in a distinctive logo or script format. However, it must be remembered that if descriptive matter is used, the scope of protection afforded by the registration of a trade mark is narrowed because the proprietor of a trade mark which contains descriptive or otherwise non-distinctive elements will not enjoy exclusive rights in such elements and will not be able to prevent third parties, including competitors, from using them in a bona fide descriptive manner in the ordinary course of trade.
 
When developing a brand name for a new product or business, it is therefore important to strike a balance between choosing a trade mark that will serve to distinguish the goods or services offered by one party, from those offered by competitors, and the need to give some sort of indication to the public as to the nature of the products or services on offer. An important point to remember, however, is that the more distinctive the brand in relation to the goods or services in question, the more powerful the brand will be and the broader the scope of protection afforded to the brand name as a trade mark will be.
 
So, having developed a distinctive, catchy brand? It is advisable to obtain registered protection of the brand name as a trade mark, as there are numerous advantages to this. The primary advantage is that the proprietor of a registered trade mark acquires the right to avail himself of the infringement remedy that is afforded to him in the event of a third party commencing use of a trade mark that is identical or confusingly similar to his registered trade mark. This remedy can significantly reduce the burden of proof placed on a plaintiff in trade mark infringement proceedings, as in terms of the Trade Marks Act, a registration certificate serves as prima facie proof of the existence of a right. In situations where a plaintiff does not enjoy registered protection for his trade mark, the burden of proof is far greater, as he will generally have to adduce sufficient evidence of use to show that he enjoys a reputation in the trade mark, and that his reputation is being damaged as a direct result of the use of the trade mark in question by the defendant.
 
Finally, in considering the issue of applying for registration of a brand name as a trade mark, it is important to bear in mind that it may be more than the name itself that qualifies for registration, as the Trade Marks Act broadly defines a mark as anything that is capable of being represented graphically, and this includes words, numbers, letters, pictures, containers, shapes, names, or any combinations of these. Different aspects of a product label, for example, may qualify for registration separately, or in combination.
 
Vicky PlumptonSenior Associate at Bowman Gilfillan