What’s in a (brand)name? Dos and don’ts when considering a new brand/trade mark

Published Date: November 6, 2023

What’s in a name? That which we call a rose by any other name would smell just as sweet.” William Shakespeare used this line in his play Romeo and Juliet to convey that the naming of things is irrelevant; however, in our modern fast paced society, driven by brands that are worth hundreds of millions of dollars, is this really the case?

As an entrepreneur contemplating a start-up or new venture, the name or brand you choose for your company, product or service is a very important consideration. This equally applies to established companies,when considering introducing a new product or service to the market or expanding a product range. A lot of thought, time and effort goes into choosing a new brand name or trade mark. Afterall, your brand is what is used to market your goods or services, it is the element by which consumers will identify your products and/or services, and, ultimately, what sets you apart from your competitors.

In the South African context, when choosing a name or trade mark, one must, as a starting point, consider what the South African Trade Marks Act 194 of 1994(‘the Act’) deems to be registrable as a trade mark. Section 9 provides that, in order to be registrable, a trade mark must be capable of distinguishing the goods or services of one person from the goods or services from another person. Furthermore, a mark must be either inherently capable of so distinguishing or capable of distinguishing by reason of prior use. The Act, in Section 10, also makes provision for various marks that cannot be registered as trade marks.

Essentially, a mark must be capable of distinguishing your goods or services from those of anotherin the course of trade. It must serve as a badge of origin in that consumers must be able to identify goods bearing a particular mark, or services rendered under a mark, as emanating from a specific proprietor.

The best and most obvious way of ensuring that one falls within the parameters of “being capable of distinguishing”, is, of course, to choose a mark that is totally unique or novel with no existing meaning, for example GOOGLE® and XEROX® . However, brand owners do not always necessarily follow this route and a common mistake often made by brandowners, is choosing a name or mark which is descriptive of the product to be offered for sale or service to be rendered. For example, trying to register “WHEELS” for vehicle tyres will simply not do. While, in exceptional circumstances, and provided certain conditions are met, protection may be granted for so called “descriptive marks”, it would be wise to stay away from descriptive terms as far as possible, when electing a new brand/name.

Steering clear from descriptive or generic terms or words, however, does not mean that “plain” or “common” words cannot serve as trade marks. In fact, there are many multi-million-dollar incorporations which opted for a common word as their main brand; including the tech giant Apple Inc. offering various goods and services under the APPLE trade mark, as well as the telecommunications corporation ORANGE, AMAZON and even the Italian retail company DIESEL S.p.A offering a variety of clothing and fragrances under the DIESEL trade mark, to name but a few.

However, when considering a common word to serve as brand or trade mark, it is important to ensure that the mark elected is an arbitrary word, without any meaning in relation to the goods or services in respect of which it is intended to be used. The fact that common dictionary words can serve as trade marks has even been confirmed in case law with PepsiCo v Atlantic Industries (983/16) [2017] ZASCA 109   stating that “…like a made-up word, a common word which is arbitrary when applied to a particular product is the exemplar of a mark inherently capable of distinguishing”.

Aside from meeting the bar of distinctiveness, other factors to keep in mind that would render a mark/brand unregistrable include, for example, signs that consist exclusively of a sign intended to designate the kind, quality, quantity, intended purpose, value or any other characteristic of the goods or services. Marks that consists exclusively of the shape, configuration, colour or pattern of goods where such shape, configuration, colour or pattern is necessary to obtain a specific technical result, or results from the nature of the goods themselves, are also not registrable under the Act.

In South Africa, as is the case with many other countries, a mark containing a national flag, armorial bearing or any other state emblem will also not be registrable. Key among these considerations is also, of course, existing registered trade marks belonging to other proprietors. In order to mitigate any risks, it is always advisable to conduct an availability search and to obtain input from brand protection specialists, before committing to a particular brand or mark.

In summary, while there are, of course, various aspects to consider when electing a new name, brand or trade mark, there are a few things to always keep in mind, firstly the more unique or novel the mark, the better. Additionally, steer clear from any descriptors of your products or services. Finally, remember that common words can also serve the purpose of a trade mark when applied correctly.

Esmé van Rooyen
Senior Associate | Trade Mark Attorney

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