What’s in a name? Trade marks and the law

Just as in horror movies when the hero decides to enter the spooky room at end of the hall there are plenty of people advising against “Do it Yourself” (“DIY”) trade marks. In fact, there is a whole industry of lawyers and trade mark agents advising against it.

The fun of trade marks is that they stop your competitors copying the unique way you do something. In the case of Coca Cola this is quite understandable. In the case of the New Zealand ice cream seller who by registering a musical trade mark stopped their competitors playing Green Sleeves, it is a service to humanity. Who could not support Harley Davidson wishing to trade mark the Harley Davidson engine rumble? This could keep so many of those ageing imitators off our streets?

When someone is considering whether or not to instruct a lawyer to register a trade mark on their behalf, they will probably take note of the government website, which is so invitingly user-friendly (always a dangerous sign). It offers a procedure which is a simple three-step program:

Step 1. Complete a simple online application form.

Step 2. An examiner:

a) searches to find out if there is another mark that is deceptively similar being used for similar products and services.

b) decides if your mark is capable of distinguishing your goods or services.

Step 3. The mark is advertised for two months and if there is no opposition then it is registered. Generally it’s yours forever provided that you pay the registration fee every few years and continue to use it.

It is hardly surprising that this approach has attracted (a little like accountancy) a lot of strange people. There are all sorts of applications, for instance:

• the bark of a dog - clearly for the dog who has everything, or

• the smell of beer on dart feathers - proving so very popular with nuns.

In this climate, what “red-blooded” business owner would not wish to apply for a trade mark to protect their point of difference? Even smells can be the subject of a trade mark. So there is something for everybody.

So why not apply for a trade mark on a DIY basis?

Well, here are three points about the application process:

1. Expect your examiner to be a person who would like to give you the trade mark (“the Mark”) but, for reasons which are a little difficult to follow, cannot do so. It is often more than their job is worth to allow you a monopoly over a word. For instance, if they gave you the mark “Money Grabbing” for use in the banking industry, what would all the other bankers do?

2. Examiners may reject your application outright or turn the knife by raising an arcane, impossibly difficult requisition (question). You will find yourself warming to their talk of “not distinctive enough”, “capable of distinguishing” and “no direct reference to the character and quality” only to realise later that you don’t know what they are on about. It might be more helpful to look upon the trade mark fraternity as a secret society with the examiners as Worshipful Masters.

3. The last 100-metre lap of the process is the 2-month advertising period. This can cause people using similar names to come out of the woodwork, encouraged by lawyers who scan the advertisements to locate potential opponents. You may end up with a fight on your hands.

Here are just three of the potential issues you may face once you have registered the Mark:

1. You have registered the mark in the wrong class or missed a class that covers a particular (usually profitable) activity. There are 45 classes being lists of words describing goods and services. It is a little bit like reading a huge packing list.

2. Trade marks usually apply to one country so if you have not registered it in other countries, it may be too late as someone else has registered the mark.

3. You don’t use the Mark properly for say three years and it is taken off you. A competitor will often helpfully start this procedure.

There are business people who manage to register DIY trade marks, run their businesses unsuccessfully and no one ever tries to steal their mark. However, if a name is central to your business and it draws customers, then DIY trade marks are not ideal.

Unless you have time to dedicate to the craft, it may be better to instruct your lawyer to make the application. But don’t let me put you off.

Extract from "The Ten Greatest Legal Mistakes in Business – and how to avoid them". Click here to download the 10 Greatest eBook