[Part 6 of our Brand Rights Blog Series]

When a company decides on a new brand name to be introduced, it is always worth considering whether the trademark in question is distinctive or descriptive. "Only distinctive trademarks can be registered, meaning only they can be granted exclusive rights," says Jani Kaulo.

Strongly distinctive trademarks and trademarks describing the characteristics of products or services are opposites. Between these are so-called suggestive or evocative brand names and trademarks, which are also generally considered distinctive.

Trademark distinctiveness is assessed more strictly

In recent years, however, the interpretation by trademark offices has notably tightened, and trademarks previously considered suggestive would now be seen as descriptive and thus ineligible for registration. Therefore, the category of suggestive trademarks can be said to have significantly narrowed.

This comes as a surprise to many companies because they often want to choose a trademark that at least tells something about the product or service itself. Therefore, before selecting a new brand name, it is of paramount importance to always conduct preliminary search to assess distinctiveness and to determine whether any registered trademark could pose an obstacle to the new brand name.

Scope of protection for a weakly distinctive trademark is limited

The degree of trademark distinctiveness affects its legal strength. The scope of protection for a weakly distinctive (suggestive) trademark is narrower, and therefore the brand owner cannot as effectively prohibit the use of similar marks.

This aspect should be especially considered when the money invested in marketing efforts such as brand name creation, launching the new brand name, or maintaining visibility for the brand start to become significant in amount. Even more importantly, these aspects need to be considered when the company already holds a significant position in the market.

The "legal strength" of a brand name significantly impacts the maximum benefit derived from investments in marketing efforts and ensures that the goodwill value acquired for the brand name remains with the company itself and does not "leak" to competitors.

Obtaining exclusive rights through trademark establishment is difficult

Unfortunately, companies often choose brand names that describe their technology or the services or products they offer, making it impossible to obtain exclusive rights except perhaps after a very long period through extensive and long-term use of the brand name, i.e., through trademark establishment.

However, obtaining exclusive rights to a trademark through establishment is also complicated by the fact that competitors typically use the same kind of brand names, thus preventing the establishment of a certain company's trademark. The process of trademark establishment will be discussed in more detail in the next part of our Brand Rights blog series, Part 7.

A legally strong and distinctive trademark is important for startups

Especially technology-driven startups often approach their chosen brand name with a "any name will do" attitude. Even though they may start with a focus on technology and innovation, it is advisable for a startup to create and choose a legally strong and distinctive brand name so that the associated brand value can be converted into assets through brand rights.

Do you need expert's help in evaluating a distinctive brand name? Contact us!

Book a complimentary consultation

Maria Puronvarsi, maria.puronvarsi@kaulopartners.fi, +358 40 669 0527
Jani Kaulo, jani.kaulo@kaulopartners.fi, +358 40 637 5442

Read more

Register your trademark – don't rely on establishment [Part 7 of our Brand Rights blog series]

Protecting your trademark through registration [Part 5 of our Brand Rights blog series]

Trademark is the core of brand rights [Part 4 of our Brand Rights blog series]

Company name is not sufficient brand protection in international markets [Part 3 of our Brand Rights blog series]

Brand rights into brand value [Part 2 of our Brand Rights blog series]

Brand elements into brand rights [Part 1 of our Brand Rights blog series]