In the last article in this ongoing series on trademarks, we looked at why it is important for your business to register a trademark as well as the advantages attached to registering a trademark.

In part 3 of this ongoing series, we will discuss how you can go about choosing a trademark. The most important element that must be considered when choosing a trade mark is that it must be capable of distinguishing the goods or services in relation to which the mark is used or proposed to be used, from the same kind of goods or services connected in the course of trade with any other person.

The issue of distinguishing the goods or services of one enterprise from another is illustrated in part as follows: The more the trade mark describes the goods, whether it consists of a word or shape, the less likely it will be capable of distinguishing those goods from similar goods of another trader. An example of a trade mark which is capable of distinguishing is WELDMESH, whereas WELDED MESH would not be. The former, despite its primary descriptive meaning, has sufficient capricious alteration to enable it to acquire a secondary meaning, thereby demonstrating that it is capable of distinguishing.

The latter has no such alteration. Whatever the extent of the use, whether or not it be monopoly use and whether or not there is evidence that the trade and the public associate it with one person, it retains its primary meaning, namely mesh that is welded. If your trade mark includes text (one or more words) you may wish to consider the following commonly used criteria for creating, designing or selecting it:

•   The sign should be easy to read, spell, pronounce and remember in all relevant languages

•    It should have no adverse meaning in slang or undesirable connotations;

•    It should be suitable for export markets with no adverse meaning in foreign languages, especially if you intend to commercialize the product abroad

•    It should not create confusion as to the nature of the product

•    It should be adaptable to all advertising media. A mark may not be registered if:

– the use of the mark would lead to confusion.
– the mark comprises or contains scandalous material.
– the mark is prescribed as a prohibited mark.
– the use of which would be contrary to the law.
– the mark would not, for any other reason, be entitled to the protection of
a court of law.
– the mark is identical to a trade mark, belonging to a different proprietor, already
on the Register in respect of the same goods or services.
– the mark so clearly represents a trade mark already on the register in respect of
the same goods or services as to cause confusion.

In Part 4 of our series, we shall discuss how you can register a trademark and the relevant procedures that must be followed in so doing.