Joyce Tan highlights the basics of selecting a strong trademark.

A good trademark identifies and distinguishes the source of a company’s product or service from those of competitors and helps a brand to stand out in the marketplace. On the other hand, a poor trademark will blunt marketing efforts and may not be eligible for protection. Selecting a strong and defensible trademark is thus important in building brand equity. Here are some guidelines on what to consider in choosing a good trademark:

1. Consider fanciful or arbitrary marks

The goal is to select a trademark which is as unique and distinctive as possible since the strength of a trademark depends on its distinctiveness. The more unique or distinctive a mark is, the higher the chances of registration as well as protection from third parties.

The strongest type of mark is a fanciful mark, that is, a coined or invented mark that does not have any meaning or exist in any language. Such a mark offers greatest protection since the use of the same or similar mark would strongly suggest deliberate copying or imitation. Examples of fanciful marks include KODAK for photography films, EPSON for printers, PEPSI for carbonated drinks and ADIDAS for clothing.

After fanciful marks, arbitrary marks are the next in terms of strength. Arbitrary marks consist of ordinary words but do not refer to the goods or services of interest. Examples of such marks are APPLE for computers and smart devices, CAMEL for cigarettes, VISA for financial services and DOVE for shampoo and body wash.

2. Avoid descriptive or generic marks

Descriptive or generic marks that merely describe the nature, quality or other characteristics of the products or services of interest are not registrable. This is as the registration of words which are commonly used in an industry would unfairly prevent interested parties from using such words to describe their own product or service. For example, while APPLE is acceptable for computers and smart devices as mentioned above, it is not registrable for apples since such term describes the actual goods. The phrase COLD & CREAMY for ice cream is also unlikely to be registrable as the phrase is a common phrase which describes the attributes of the product and other ice cream producers are also likely to use such phrase for their products.

Laudatory words such as “best”, “super”, “good” or “cheap” also fall within the category of descriptive marks and are usually not registrable.

3. Want to convey an idea without being totally unregistrable? Consider suggestive marks

Suggestive marks are marks which imply or suggest the nature of the product or service but do not directly describe them. Examples include NETFLIX for entertainment services and COPPERTONE for sunscreen. While suggestive marks are popular amongst brand owners since less detail is needed to explain the product or service, it would still be best if a mark is totally irrelevant to the product or service since suggestive marks may still receive provisional refusals in Malaysia on grounds of descriptiveness.

4. Avoid marks that will cause confusion

Since the function of a trademark is to distinguish one trader from another, marks which are identical or confusingly similar to an earlier trademark are not registrable since they will cause the consuming public to be confused or mistaken about the source of a product or service. It is thus important to conduct pre-filing clearance searches to identify potential conflicting earlier marks and manage the risks of trademark infringement.

5. Avoid elements that cannot be registered

There are various elements which are not allowed to be included under trademark laws. Amongst others, marks which are contrary to law, public interest or morality such as marks consisting of profanity are prohibited from being registered. Some other examples include the prohibition of national emblems such as the national flower and specific international symbols such as the Red Crescent and Geneva Cross.

Trademarks undeniably remain valuable assets to a brand in the long run and a good trademark will no doubt increase the perceived value of a product or service. It is therefore crucial to invest in a strong trademark for better marketing positioning and to avoid wasting resources in pursuing an unregistrable trademark. For tailored advice on conceptualising a brand, please get in touch with our trademark professionals.

Joyce is an associate at Wong Jin Nee & Teo. She is focused on trademark prosecution and has vast experience in worldwide trademark coordination.