Tips for choosing a good trademark

A good trademark should meet some specific legal requirements. This article will give you practical advice on selecting a good and legally sound trademark. 

Choose a distinctive trademark.

In the first place, make sure that your trademark is distinctive enough. Your trademark should be used to set your goods or services apart from those of your competitors. A general trademark will not do the job and will be most probably be refused by the trademark register. Descriptive signs are automatically considered to lack distinctive character. The lack of distinctiveness is generally more of a problem with word marks than with figurative marks. For instance, you can use descriptive words in a logo if the logo in its entirety has sufficient distinctive character for recognition by the public as a trademark (in this case, you will have no exclusive rights to the descriptive words as such, but only to the logo as a whole). A classic example of a descriptive sign is the addition of the character "e" before a word, to indicate that you are active in the digital world (e.g. the word e-server). In exceptional circumstances, signs that initially lack distinctive character may nevertheless acquire distinctiveness through long and intensive use and will, as a consequence, be accepted by the trademark office for registration (this is for instance the case with the names of many airlines (e.g. "British Airways"), which are merely descriptive, but are still widely recognized as trademarks and thus open for trademark registration). Note that, even if the trademark register does accept your application, you may find your trademark to be declared invalid later on in a court procedure if it lacks distinctiveness.

Avoid misleading or deceiving trademarks

Always make sure that your trademark is not misleading or deceiving (potential) customers.

Do not use offical symbols

Make sure that you do not include official symbols of states or international organizations (such as flags, coats of arms or other official emblems) in your trademarks. The trademark register is likely to reject such applications. For instance, the use of the flag of the European Union is one of the most common grounds for rejection of a trademark application.

Mind cultural or linguistic differences

Finally, if you want to launch your trademark internationally, then take due account of cultural or linguistic differences.

Feel free to contact me if you have any question, comment or suggestion or if you are looking for a lawyer / attorney specialised in trademark law (Belgium, Benelux, European Union (OHIM-EUIPO)).

For more information on Benelux trademarks, see my previous blog post.

For more information on how to protect your trademark in Belgium (and the rest of the Benelux), see my separate blog post. 

Author: Bart Van Besien

Attorney

Finnian & Columba

Belgium

bart@finnian.be

Specialised in intellectual property law (copyright, trademarks, patents, domain names, etc.) and media law.