Did you know that in order to legally protect a name, word, slogan, logo or other trade mark you need to register it? As a business owner, you may have a trade mark that you’d love to register to stop others using it, but if it’s too descriptive of your goods or services, it will be difficult to register under UK and EU trade mark law. Interestingly, when you look at products you see in shops every day, it’s clear that there are registered trade marks that can easily be argued to be descriptive of goods and services – for example, L’Oreal’s famous slogan ‘because I’m worth it’.
Why can a descriptive name not usually be protected?
Some of the key reasons that descriptive names can’t usually be protected include the obvious issue of competition. How can you really protect a descriptive slogan from being used by competitors? If it describes your service, it will more than likely describe the services of your competitors in your field. For this reason, a descriptive name will have no high sale value if you sell your business. Moreover, descriptive signs are weak and expensive to defend on infringement.
But what is the way around this?
So many trade marks have been rejected for being too descriptive. Some prominent examples in 2008/9 include ‘Passion for wood’ being rejected for building materials and the French translation of ‘A dream pastry’ for pastries – you can’t get much more descriptive than that.
However, three very large companies all have descriptive slogans…
- Gillette: ‘the best a man can get’
- L’Oreal: ‘because I’m worth it’
- Premier Foods – creators of Mr Kipling cakes: ‘exceedingly good cakes’
How did they manage it?
Using a descriptive name over time continuously, along with a heavy advertising reach, can result in a large majority of the public associating a descriptive slogan with a certain company. For example, ‘because I’m worth it’ was first used by L’Oreal in 1973 and 80% of women now recognise the slogan as being associated with that brand.
The most prominent example, we would argue, is ‘exceedingly good cakes’. Based on the nature of Mr Kipling’s products, this really could not be more descriptive.
Premier foods had to battle to register this descriptive slogan – their initial application was rejected on the grounds that the trade mark was too descriptive. How did they eventually push this over the line?
Following their rejection, Premier Foods gathered evidence of their extensive and continuous use of this mark. This included extensive advertising since 1967, costing over 55 million; they also included survey results from a UK survey showing that their television advertisements had reached 82% of shoppers, who had seen the commercial on average 4.5 times a month. Attached to their evidence was also a newspaper article from 1995, discussing the advertisements of Mr Kipling cakes and showing an obvious connection between these goods and the slogan.
In short, their continued use of the sign evolved to become the mark that the public connected with the source of the goods: Mr Kipling. Suddenly, ‘exceedingly good cakes’ had acquired distinctiveness.
In January 1996, the Intellectual Property Office decided that after viewing the evidence, the application to trade mark ‘exceedingly good cakes’ was finally able to proceed because of the distinctiveness that had been acquired through use.
In short summary, yes you can protect a descriptive name. It just takes a lot of time, reputation and exceedingly good persistence.
If you would like any support protecting your brand, please get in touch and we will be happy to help.
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Ryan has helped a vast number of businesses protect and control their intellectual property as well as drafting and advising on consumer and commercial contracts.
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