For many business owners, choosing a name for a new business venture is an exciting stage of building a brand. However, it is also one of the most important decisions you will make, as your trade name often becomes your trade mark.
A trade mark is a valuable asset that forms part of a business. It serves not only to distinguish a business’s goods or services from those of its competitors, but also to embody the reputation, goodwill, and brand identity of a business. This article explores some of the key considerations when selecting a trade mark.
The Role of a Trade Mark
South African trade mark law places significant emphasis on distinctiveness. Section 9 of the Trade Marks Act provides that, in order to be registrable, a trade mark must be capable of distinguishing one person’s goods or services from those of another. A mark may be inherently distinctive from the outset or may acquire distinctiveness through use over time.
At its core, a trade mark functions as a source indicator. It enables customers to identify the source of particular goods or services and distinguish them from those offered by competitors. Over time, a trade mark becomes synonymous with the quality and reliability of the business it represents. Consequently, when consumers encounter a familiar trade mark, they associate it with a particular standard of quality, service, and reputation.
The importance of trade marks has long been recognised by the courts. Our Constitutional Court has quoted the following passage from a 1942 United States decision:
“The protection of trade-marks is the law’s recognition of the psychological function of symbols. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same – to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade-mark owner has something of value“[1]
Trade marks are recognised as far more than badges of origin, as they perform important communication, advertising and investment functions. In this manner, a distinctive trade mark will serve a dual purpose, assisting customers to identify your business, good and services, and provide a legal basis to prevent competitors from adopting confusingly similar trade marks.
To achieve these benefits, it is important to choose to choose a trade mark that is capable of functioning as a trade mark. When doing so, there are two key considerations: distinctiveness and availability.
Distinctiveness
It is common to encounter businesses trading under names such as “Best Plumbers”, “24/7 Handyman”, and other descriptive terms. While such names may effectively communicate the nature of the goods or services offered, they are inherently weak from a trade mark perspective, as they lack the necessary distinctiveness of a trade mark. Accordingly, such marks do not grant their owner exclusivity in the mark.
Distinctiveness is the ability of a trade mark to distinguish one trader’s goods or services from those of another. The more distinctive a trade mark is, the easier it is for consumers to recognise it as identifying a single commercial source and the broader the scope of trade mark protection it is likely to enjoy.
At the highest end of the spectrum for distinctiveness are coined or invented words, which have no ordinary meaning and are therefore, inherently distinctive. Marks such as these are generally the easiest to register and enforce.
By contrast, descriptive words, laudatory terms, or words that other traders may be required to use in the course of trade are generally weak trade marks. Such marks often face objections during the registration process and, even if they are registrable, usually receive a narrower scope of protection.
For this reason, purely descriptive terms often encounter difficulties during the registration process. Section 10 of the Act specifically prohibits registration of marks that merely describe the kind, quality, intended purpose or other characteristics of the goods or services concerned. While extensive use may sometimes enable a descriptive mark to acquire distinctiveness, businesses generally place themselves in a stronger position by selecting a more original trade mark from the outset.[2]
Trade mark specialists often describe trade marks as falling on a spectrum of strength. Invented words are generally the strongest, followed by arbitrary words that bear no connection to the goods or services. Descriptive words are usually the weakest. The stronger the trade mark, the easier it is typically to register, enforce and build into a valuable brand asset.
Availability
Even where a trade mark is distinctive, registration may be refused if it conflicts with an earlier trade mark. The Trade Marks Act prevents the registration of marks that are identical or confusingly similar to earlier registered trade marks (or even pending applications) where their use would be likely to deceive or confuse consumers. This reflects a central principle of trade mark law: consumers should not be misled regarding the origin of goods or services.
Importantly, the fact that a company name has been approved by the Companies and Intellectual Property Commission (CIPC) does not mean that the name is available as a trade mark as, in practice, CIPC does not cross-check the company names against the trade mark register. A company name registration may nevertheless infringe an existing trade mark.
Accordingly, before investing in packaging, advertising, domain names or other marketing material incorporating your trade mark, it is important to conduct a trade mark availability search. The value of conducting a trade mark search before adopting a brand is also recognised by the CIPC. The Trade Marks Division provides search facilities specifically because early searching assists businesses in assessing the availability of proposed trade marks and making informed branding decisions before significant investment is made.
Although such searches are not compulsory, they are strongly recommended. An availability search can identify potential conflicts at an early stage, allowing businesses to assess legal risks before committing significant resources to branding. Early clearance searches can avoid costly rebranding exercises, and infringement proceedings after a business has already established its presence in the market.
Selecting a trade mark involves more than choosing a name that sounds appealing. A strong trade mark should be both distinctive and available for use. By considering these factors from the outset, businesses can establish a brand that not only resonates with consumers but is also capable of securing effective legal protection and long-term commercial value.
For assistance with registering your brand, please contact the author. Reduced rates are available for small businesses.
Written by Michelle Smith, Associate & Reviewed by Mohamed Jameel Hamid, Partner