1.  Make sure your chosen trade mark is a strong one

A strong trade mark is characterised by how distinctive it is from other marks on the market relating to similar goods and/or services. Generally, the more the mark is capable of being distinguished, the broader its protection will be and the easier it will be to protect it.

Note that the ‘strength’ of a trademark is different to the strength of a ‘brand’ for marketing purposes. A strong trademark does not necessarily mean that customers will flock to your business – rather, it means that it would be difficult for other companies to oppose or impinge on your trademark. Having said that, in many cases a strong trade mark will also go hand in hand with launching a successful brand.

A strong trademark can be:

1.  a word from the dictionary with a common meaning that has no relation with the product or service it distinguishes,
e.g.: Dove for personal healthcare, Billabong for  fashion and retail.

2.  an original mark consisting of a combination of letters or words with no dictionary or a known meaning,
e.g.: Kodak for cameras and related services, Firefox for Internet web browser, Microsoft for software.

3.  a suggestive mark, which alludes to and creates an association with the goods and/or services being offered without actually describing them. These trade marks still have a good and valid legal protection, and often represent some of the most marketable ‘brands’, but  from a trade marks perspective, they will be more difficult to register and may be more likely to face opposition now and in future.
e.g.: Airbus for airplanes

 

2.  Select the appropriate classes for your trade mark 

When you register your trade mark, it is not unconditional – it must be registered in respect of specific classes of goods or services. A ‘good’ is any thing which can traded, and a ‘service’ is an activity done by one party for another.

According to the Nice Classification, there are 45 Classes:

a) Classes 1 to 34 for goods, for example Class 15 is for musical instruments;

b) Classes 35 to 45 for services, for example Class 43 is for hospitality services.

 

3.  List out your goods and/or services within your chosen classes

Once you have chosen the classes your trade mark will fall within, then you have to set out a list of the actual goods and/or services which you offer. These will be the goods and/or services which are protected under your trade mark so make sure they are comprehensive! However, note that you must actually use the goods and/or services listed in your trade mark application. Otherwise, the trademark can be revoked in future, if it is not used within a continuous period of 5 years, following the registration, for the goods and/or services you listed in the application.

Example

Your company produces guitars, so you chose Class 15 (musical instruments). You then need to set out that you are protecting guitars within Class 15. Your specification may therefore include:

–  guitars
–  electric guitars
–  electric bass guitars, etc.
and their accessories, such as:
–  bags for guitars
–  guitar strings, etc.

You also choose Class 9 for apparatus for recording, transmission or reproduction of sound or images (amongst others). You then need to set out that you are protecting, for example:
–  sound amplifiers
–  loudspeakers, etc.

Note that two seemingly identical trade marks can co-exist if they are listed for different goods and/or services:
e.g. Gibson for guitars (Class 14) and Gibson for cocktails (Class 33).

 

Get in touch to hey@legalsidekick.com if you have questions or need help.

 

This Basic Training article was written by Silvia Dal Cin for Legal Sidekick. Legal Sidekick is the legal platform for startups. We offer automated contracts and loads of startup legal resources and guides. For trade marks and other legal queries, contact us if you need help.

 

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