Creating or Selecting a Trademark
Conducting Trademark Searches
Brands and Designs to Market Goods & Services Abroad
A trade or
service mark is a distinctive sign which identifies certain products or services
as those produced or provided by a specific person, enterprise or a group of
persons/enterprises allowing the consumer to distinguish them from goods or
services of others (for a more detailed explanation
are in many ways the face of your business. They allow your customers to
distinguish your products or services from those of your competitors, giving
your SME the possibility to better
market its goods or services.
But trademarks are
not just used as identifiers. They are also seen as a guarantee of consistent
quality. A customer who is pleased with the quality of your product or service
will continue to purchase it based on the quality expectations based upon the
known trademark. You should, therefore, take great care in
choosing and designing
an appropriate trademark,
protecting it, using it with care in advertising, and policing its misleading or
improper use by others.
a mark, you should find out whether the envisaged mark or similar ones have
already been registered by other enterprises for the category of products or
services and markets that you are interested in. This type of information is
conducting a trademark
search. Doing it early is
crucial so as to avoid unnecessary conflicts with other enterprises and loss of
Once you have
searched trademark databases for conflicting marks, you should think about
finding the best way of protecting it. On how to register your trademark see: “Some
Common Features of Trademark Registration Procedures.”
Creating or Selecting a Trademark
selecting a trademark is no easy task. There are, in fact, specialized companies
whose main service is to find or develop an appropriate trademark for your
needs. While there are no hard-and-fast rules of what may be a successful
trademark, there are some useful guidelines. Initially, you should make sure
that your proposed mark meets the legal requirements for
Above all, your mark must be sufficiently distinctive to be protectable and
registrable with your national and foreign trademark offices. Inherent
distinctiveness will also enhance its easy recognition by consumers.
Moreover, among the commonly used criteria for creating, designing or selecting
a trademark, you may wish to consider the following:
should be easy to read, spell, pronounce and remember in all relevant
It should have
no adverse meaning in slang or undesirable connotations.
It should be
suitable for export markets with no adverse meaning in foreign languages,
especially if you intend to commercialize the product abroad.
It should not
create confusion as to the nature of the product.
It should be
adaptable to all advertising media.
of choice is likely to fall under one of the following categories:
Coined words (or
“fanciful” words): These are invented words
without any real meaning in any language (e.g. Kodak or Exxon). Coined words
have the advantage of being easy to protect as they are more likely to be
considered distinct. On the negative side, however, they may be more difficult
to remember for consumers requiring greater efforts in advertising the products.
are trademarks that consist of words that have a real meaning in a given
language. The meaning of such words, however, has no relation to the product
itself or to any of its qualities (e.g. Apple for a Computer). As is the case
with coined words, while the level and ease of protection is generally high,
there is no direct association between the mark and the product requiring thus
greater marketing power to create such an association in the mind of the
are marks which hint at one or some of the
attributes of the product. The appeal of suggestive marks lies in the fact that
they act as a form of advertising and may create a direct association in the
mind of consumers between the trademark, certain desired qualities and the
product. A related risk, however, is that some jurisdictions may consider a
suggestive mark too descriptive or not sufficiently distinctive to meet the
criteria for trademark protection.
As a first step
to protecting trademarks, you are advised to conduct a trademark search to make
sure that the mark in question is not already in use by another enterprise in
the target market(s). Trademark offices in many countries register marks without
comparing them with existing trademark registrations and applications received
earlier, but leave it to your future competitors to give notice of opposition
once the mark or the application has been published/registered. Therefore,
obtaining trademark registration in such countries is no guarantee that the
trademark will not be infringing on the rights of others. It is therefore
important, wherever possible, to search national trademark databases prior to
using a trademark for your export operations.
searches may be conducted through online databases (though few countries
currently offer such services), specialized firms, or at the national trademark
registry. It is important to bear in mind that, while trademarks which are
identical to your own mark can be easily identified, confusingly similar
trademarks that conflict with your own will be more difficult to spot. Depending
on the merits of the case, it may be advisable to use the services of a
competent trademark agent or attorney for a trademark search for your SME.
trademarks (with the exception of “well-known
marks”) only protect the goods
or services for which they are registered as well as those goods or services
that are similar to those for which the trademark is registered, your registered
trademark may be lawfully used by others for marketing goods or services that
are unrelated to those of your SME.
A list of
on-line trademark databases by country is available at the following
Brands and Designs to Market Goods and
reasons for protecting trademarks and industrial designs in the domestic market
fully apply to foreign markets too. Trademark registration, in particular,
enables you to maximize product differentiation,
enhancing recognition of your product or service in international markets and
establishing a direct link with the foreign consumers. Depending on the nature
of your service, a
franchising agreement with firms abroad, could be a useful alternative way
to earn revenue from your trademark abroad as well.
Companies that export unbranded products will face disadvantages such as:
revenues as consumers demand lower prices for unbranded goods.
of customer loyalty largely due to their inability to recognize the product
and distinguish it from the products of competitors.
Difficulties in marketing and advertising products or services abroad in the
absence of a suitable symbol or easy identifier that links your products or
services with your SME, as marketing an unbranded product is inherently much
regard to industrial designs,
protection in export markets will help not only to strengthen your overall
marketing strategy but may also be important for customizing products for
specific target markets, creating new niche markets for your company’s products,
and strengthening your company’s image and reputation by linking it to a