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Distinctiveness and Availability
What is distinctive to be a trademark in the countries of interest ?
When creating a trademark the strength or distincti- veness of a trademark matters. The more distinctive the trademark, the more it is exclusive and easier to defend from the use by other market players. The levels of strength or distinctiveness range from strongest to weakest depending on the nature of the trademark. Because trademark rights are territorial
words, but still good to protect and to defend.
Suggestive trademarks give a hint to the attributes of the product. Depending on how suggestive or des- criptive of the product they are, their protection can be quite restricted.
In addition to these considerations, it has also to be checked if the trademark is not likely to deceive or mislead the consumers. For example, using refe- rences to “Swiss” or “Switzerland” when products are not manufactured in Switzerland would be mis- leading and not allowed.
HOW TO CREATE A TRADEMARK
the assessment needs to be made for each country where protection is sought.
Fanciful trademarks consist of invented words or devices without any intrinsic or real meaning. These are the strongest trademarks and have the advantage of being easy to protect and to defend from com- petition. The disadvantage, however, they require a bigger marketing effort, because they may be more difficult to remember for consumers.
Arbitrary trademarks are words or devices that have a meaning but without any relation to the product they are branding. They are less strong than invented
Descriptive terms are words that in the trade usual- ly refer to the attributes of the product, by descri- bing its features or qualities. Generally, these terms cannot be protected and defended as a trademark. However, if intensively used and advertised over a sustained period of time to the effect that consumers identify them as a marking of the products they can become a distinctive trademark. This is known as “acquired distinctiveness” or “secondary meaning”.
Generic terms describe directly the product or its characteristics and cannot be protected. They need to be kept free for all market players to refer to their products.
The same principles apply to the other signs that are not words. For example, the symbol of an ordi- nary apple would be descriptive for apple juice and deceptive for orange juice, and could not be legally protected as a trademark. For computer software, however an apple is not descriptive and functions as a distinctive trademark.
In some instances, the creation of a rather descrip- tive trademark may have good business reasons. To achieve some legal protection adding other ele- ments, e. g. a device, color combinations, may be advisable.
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