Not all trade marks are capable of protection through formal trade mark registration.

One of the most common reasons why a mark might not be registerable is because it is a generic term and/or descriptive of the goods or services provided under the brand.

By way of example, “NZ Dry Cleaning Services” describes the services (being dry cleaning) which are provided under the brand.

“Rocket Fuel” is a barbeque sauce, and so the brand does not describe the goods provided under the brand. However if “Rocket Fuel” was a brand marketing rocket fuel it would be descriptive and not capable of formal protection.

But don’t give up!

Although this might be the situation at the start of your business, once you have been using a descriptive brand for a number of years and where you can prove your mark has become so prevalent in the market and known as belonging to your business, it is then possible to file “Evidence of Use” and obtain formal protection through trade mark registration.

Why is this the case?

The rationale behind the rule against formal protection of descriptive or generic brands is that a single business in a sector or industry should not be able to monopolise a commonly used word or phrase. Others who compete in the marketplace should be able to use them to describe their services without fear of infringing a registered trade mark.

The rationale behind allowing the registration of a generic or descriptive brand once reputation has been built in it is that others in (or entering) the marketplace delivering the same goods or services should not be able to piggy-back off the reputation built up by another business in that sector over a period of years.

A good example is the mark MASTER PAINTER. It is arguably descriptive/generic, however it is now so prevalent in the market place that consumers align it with Master Painters New Zealand Association Inc. When a painter describes himself as a Master Painter, consumers believe that painter is associated with the Master Painters organisation.

How can I protect my descriptive/generic brand?

If you feel you have enough reputation in your brand that it has become synonymous with consumers as being “yours,” you can file “Evidence of Use” in the form of a Statutory Declaration, providing the Trade Mark examiner with proof such as consumer surveys, details of investment in the brand, national advertising campaigns (if any) and similar.

Why register my brand as a Trade Mark?

Once your trade mark is registered you have legal evidence of ownership of your brand. This makes it easier, cheaper and quicker to enforce your ownership rights against anyone who attempts to misappropriate or misuse it.

Kirsten Ferguson
Commerical Lawyer