What Is a Trade Mark? Protecting a Sign, Not an Idea

The legal purpose of a trade mark is to indicate origin. A consumer seeing a mark should be able to infer that the goods come from a particular undertaking and therefore carry whatever quality that undertaking maintains, which saves the buyer from having to investigate every purchase and gives the producer a reason to maintain standards. The protection therefore runs against confusion rather than against copying as such. This distinguishes it sharply from the neighbouring rights: copyright protects an original expression and expires; a patent protects a technical invention for a fixed twenty years in exchange for publishing how it works; a registered design protects appearance; and a trade mark protects a sign for as long as it is used and renewed, potentially forever, because the justification is ongoing consumer protection rather than an incentive to create something new.

The requirement is that a sign be capable of distinguishing one trader's goods from another's and be representable clearly enough for the register to be searched:

• •Words, names, invented terms and slogans, with invented words being the strongest because they carry no other meaning
• •Logos, devices and stylised lettering
• •Shapes, though not shapes resulting from the nature of the goods or necessary to obtain a technical result, which is why a purely functional form cannot be locked up forever through trade mark law
• •Colours in specific applications, which require evidence that the public already associates the colour with the trader
• •Sounds, and in some jurisdictions motion, holograms and position marks
• •Smells and tastes in principle, though almost none have been successfully registered because representing them clearly has proved impossible

Not every sign qualifies, and the strength of a mark tracks how far it is from describing the goods. The conventional ladder runs from fanciful marks, invented words with no prior meaning, through arbitrary marks, real words applied to unrelated goods, to suggestive marks that hint at a quality without describing it, then descriptive marks, which describe a characteristic and are refused unless the applicant proves the public has come to recognise them as a brand through use, and finally generic terms, which are the ordinary name for the product and can never be registered by anyone. Marks are also refused if they are deceptive, contrary to public policy, consist of protected emblems, or conflict with an earlier mark for similar goods. Registration is made within classes of goods and services under an international classification, which is why the same word can be registered by different owners for a bank and for a type of chocolate without either being able to stop the other.

A trade mark is the only major intellectual property right that can be destroyed by its own success. If a mark becomes the common name in trade for the product itself and the owner has not acted to prevent it, it may be revoked for genericness, which happened to aspirin, escalator, thermos, linoleum, trampoline and kerosene in various countries. That is why owners publish style guidance insisting the mark is used as an adjective beside the generic noun, why they send letters to dictionaries and journalists, and why some run advertising whose only purpose is to remind the public that the word is a brand. A mark can also be revoked for non-use, typically after five years, since the right exists to protect actual trading. Enforcement is therefore a continuing obligation rather than a one-off registration, and a proprietor who tolerates infringement can find the mark weakened when it comes to stopping someone who matters.

The basic test is whether the public is likely to be confused by use of an identical or similar sign on identical or similar goods, assessed globally by weighing the similarity of the signs, the similarity of the goods and the distinctiveness of the earlier mark, with a stronger mark getting wider protection. Marks with a reputation get an additional layer covering unfair advantage and detriment even without confusion, which is how a famous luxury brand can stop an unrelated trader trading on its image. The limits are equally important: use of a mark to describe the actual goods, comparative advertising within rules, use of your own name, and use to indicate the intended purpose of spare parts and accessories are all permitted, and exhaustion means the owner cannot control resale of goods it has already put on the market. Parody and criticism receive varying protection, generally stronger in the United States on free speech grounds than in Europe.

A trade mark protects a sign that indicates commercial origin, so the right runs against confusing the public rather than against copying. It can be a word, logo, shape, colour or sound, and is registered within classes of goods, which is why the same word can belong to different owners in different sectors. Protection is renewable indefinitely while the mark is used, but it can be revoked for non-use or lost entirely if it becomes the ordinary name for the product. Descriptive terms qualify only with proof the public treats them as a brand.