Trademark Registration Guide and Information

Selecting a strong and marketable trademark

When selecting a new trademark for your products or services, it is important to strike a balance between marketability and distinctiveness. Marketability helps maximises market exposure for your products / services. Distinctiveness makes it easy for consumers to associate a product / service with your company. A distinctive sign can also be registered as a trademark.

In practice, it is often difficult to achieve a right balance between marketability and distinctiveness; the most marketable mark always tends to be the least distinctive, and vice versa. By applying basic trademark principles, you can ensure that your trademark is both marketable and distinctive.


Is your mark distinctive?

One of the requirements for trademark registration is that the mark must not be devoid of any distinctive character. To determine distinctiveness, trademarks may be generally classified into the following categories (listed from most to least distinctive):

 

protectable marks 

Fanciful mark 

Fanciful mark is inventively-coined and has no meaning. STARBUCKS and EXXON are examples of such marks. Fanciful trade mark is considered the most distinctive and is afforded the greatest protection.


Arbitrary mark 

Arbitrary mark comprises common word which is used in a manner that their normal meaning bears no relation to the products / services to which they are applied. APPLE for computers and DIESEL for clothing are examples of arbitrary marks.


Suggestive mark 

Suggestive mark tends to relate to the quality or characteristic of the products / services, although a consumer would have to exercise some degree of imagination in order to determine the characteristic of the products / services. 7-ELEVEN for convenience store is an example of a suggestive mark.

Fanciful, arbitrary and suggestive marks are easy to register as there is no apparent connection between the mark and the products / services. However, it is often difficult to market these marks as more effort is required to convey the qualities of the products / services to the general public.


Descriptive mark 

A descriptive mark directly describes the quality or characteristic of the products / services. Examples of descriptive marks include Denim for jeans or trade marks containing laudatory terms such as BEST and SUPERIOR. A descriptive mark is prima facie unregistrable, but may become registerable upon substantial use.

Descriptive mark is the easiest to market since they simply describe the products / services they are marketed with. However, registering descriptive mark is often costly as it is routinely objected by Trade Marks offices.

 

Generic mark 

Generic mark consists of common names for the products / services with which it is used. Generic mark is unprotectable since they are incapable of differentiating products / services of one trader from another.

 

Striking the Balance

When choosing your mark, primary consideration should be given to trademark that is sufficiently distinctive (to qualify for registration) and yet easily marketable. Finding this balance can be time-consuming. However, the reward of pairing marketability and distinctiveness ensures marketing ease and appropriate legal protection for your trade mark.