Corporate Branding
Why distinctive trade marks are the fittest for survival
How to select a legally great product, service, business or domain name
Noric Dilanchian, Managing Partner, noricd@dilanchian.com.au
The success of a new brand or trade mark greatly When selecting a brand for trade mark registration
depends on marketing, design, management and legal consider how it will be used as a “sign” for the relevant
considerations and ideally a combination of them. product or service (eg on packaging, brochures,
letterheads) as well as in newspapers, magazines,
To select a good brand for trade mark registration billboards, radio, television, CD-ROMs and the Internet.
purposes, business managers and executives need
clear guidelines for the legal considerations. Next, consider the look of the brand or mark. This is
important in all media except radio. Where sound is
This article provides basic legal guidelines for use critical, multiple vowels seem to work well eg Gucci,
when you conduct a brainstorming session to decide a Toyota, Igloo, Deli, Pirelli.
new corporate brand or other name, logo or sign for
which your business seeks a legal monopoly. The Turning to the meaning of the proposed brand or
guidelines are generalisations, but they are based on mark, businesses love to try to use and monopolise
the background complexity of trade mark law. descriptive marks. Descriptive marks mean something.
They describe at least one feature of the product or
These trade mark law guidelines will help business service eg “Chairs Plus” for a company that sells
managers brainstorm, develop and register product, seating. However, as descriptive marks are obvious,
service, business or domain names that work legally, ie they very rarely meet the legal requirement of being
they provide a defensible monopoly and ideally a “distinctive”. While may be great for marketing
brand that can be registered as a trade mark. purposes, but it work in submissions to IP Australia or
to a court seeking registration of the descriptive mark.
If you follow the guidelines you will select a name or
logo fit for legal survival for your organisation. It will This is because in law what we call “legal
help defeat infringers and overcome legal challenges. Darwinianism” is at work in the treatment of trade
marks. In following trade mark law, courts very rarely
consider descriptive marks (as contrasted with
1. Why a “distinctive” trade mark?
“distinctive” marks) fit for legal survival. (In passing,
note that commerce would be hindered
A central principle emerging from trade mark law and
if all descriptive marks were privately
practice is that “distinctive” trade marks are the fittest
owned.) Thus, as a simplification, in the
for legal survival.
legal environment the trade marks which
survivers tend to be at the top of the
This key message can be illustrated by following the
following hierarchy:
step by step process for brainstorming a legally
effective trade mark.
Trade Mark Law Darwinianism
We begin with the reality that there are numerous THE FITTEST: Invented or fanciful marks
types of trade marks. Trade marks include: eg KODAK is an invented word and
APPLE is a fanciful word when applied to computers.
THE CHALLENGED: Suggestive marks
words written in common print (eg business or
•
ie those which convey some information regarding the
company names),
goods or services but not enough to be directly
brand names written in a distinctive graphic form
• descriptive eg PRUDENTIAL when applied in the
(eg Coca-Cola, Ford and Kellogg), insurance industry.
devices or logos (eg Apple Computer’s apple
• THE LOSERS: Directly descriptive marks
logo, Rolls Royce’s flying lady), eg AUSTRALIAN FINANCIAL REVIEW when applied to
sounds, aromas, other types of signs, or a newspaper.
•
THE EXTINCT: Generic marks
composite marks which combine the above or
•
eg ASPIRIN, CELLOPHANE and THERMOS.
other types of trade marks.
www.dilanchian.com.au
Reproduction permitted for non-commercial use, provided the author’s credit is
preserved. For other uses send an email to info@dilanchian.com.au. Copyright ©
Dilanchian 2002.

Why distinctive trade marks are the fittest for survival DILANCHIAN
environment. Among
2. Difficult to Protect Marks
the best trade marks The secret for
are those which are achieving the
There are four types of marks that cannot be best outcomes is
invented words (eg
registered or are difficult to register or legally to push in unison
decisions based
XXXX, Kodak, Exxon
protect. Ideally they should be avoided if trade mark on management,
or Sony) and those design and law.
registration is desired. We partner with
which are ordinary you to improve
words having an your branding
Directly descriptive marks. This is the first type of decisions.
unexpected or fanciful
mark which is difficult to register as a trade mark.
connection with the
As noted already, since it makes their job easier, Intellectual Property Law
relevant product or
marketers and sales people prefer marks which
service eg Apple (the Business Law
describe the product or service eg PERFUME for
record label of the Assets Management
perfume or HAMBURGERS GALORE for a fast food
Beatles) Swan (beer),
franchise. However trade mark law refuses to Entrepreneur Support
and Snap (printers).
grant a monopoly for words or symbols that are
common to the trade to which a mark relates. Still,
Distinctive marks help to limit the scope for copy cats
descriptive words can be protected under other
to take advantage of the skill, work and goodwill of
branches of the law if they have acquired a
the owner of the original trade mark.
secondary meaning linked to their owner.
It has been said trade marks are the most
Surnames. Reject a mark used as a surname, unless it
international language in the world. Good trade
is highly uncommon. A specific test for this is
marks attract licensees and franchisees who can
applied by the Australian Trade Marks Office. To
become a source of revenues which the owner of the
determine if a word is a surname check with
mark cannot otherwise directly tap. A distinctive trade
telephone directories.
mark is more easily protected under the law and
hence it is an ideal type of mark to target during a
Geographic names. Reject a mark which has a brainstorming session.
geographic meaning (eg Australia, Bali, Tokyo)
especially if the geographic location is a centre
from which the relevant products or services are
known to originate. The exception is where it is a
Authorship Note
very obscure name. To determine if a word has a
geographic meaning check with atlases. The
following geographic names have been held * Noric Dilanchian (BA LLB), Managing Partner of
Dilanchian Lawyers & Consultants has worked with
unregistrable - MICHIGAN for heavy engineering
clients to register and protect hundreds of trade
equipment, LIVERPOOL for cables and GREAT
marks over 20 years. This has extended to
WESTERN for wine. By way of exception, TIJUANA
registration, licensing and litigation over brands,
SMALLS has been accepted for cigarettes and in
product packaging designs, domain names, business
the United Kingdom ROMAN HOLIDAY for names and company names.
cosmetics.
Noric notes that trade mark and name registration
Initials. It is difficult to invest initials with real legal work achieves the best results if advice is
personality and distinctiveness. They also have a obtained at the earliest stage of brand or name
brainstorming, selection and design.
number of other inadequacies. It is difficult (and in
most countries impossible) to register initials as
Dilanchian Lawyers & Consultants
trade marks. Initials can be frustrating for
Sydney, Australia
consumers as they can be difficult to look up in a
Tel (+61 2) 9269 0229
telephone directory. The same initials can identify Email noricd@dilanchian.com.au
different organisations eg ABC for American For more papers visit www.dilanchian.com.au
Broadcasting Corporation or Australian
Broadcasting Corporation.
3. Distinctive Marks are Ideal
Let’s turn away from difficult to register trade marks
and return to distinctive marks.
As illustrated in the above “Trade Mark Law
Darwinianism” hierarchy, invented and fanciful trade
marks are distinctive, hence ideal in the legal
Web www.dilanchian.com.au | Email info@dilanchian.com.au 2