The Brand-as-a-Trade Mark Spectrum

(Written by: Rachel Woo)

A trade mark serves as an identifier of where the goods and services originate from, in that it allows consumers to identify and recognize goods and services as those belonging to the owner of the trade mark. While it is not necessary to register a mark as a trade mark in order to use it, not only does it value add to a business by providing the owner with rights to control the use of the trade mark, it also provides a defence to the use of the mark by the owner.

In the event that a mark has not been registered but has been used for a long period of time, especially marks that may be descriptive of the goods and/or services provided by the owner, such marks can still be registered, where the mark has acquired the capability of allowing consumers of the owner’s goods and/or services to associate the goods and/or services provided with the owner of the mark. This being where the mark is used by consumers to distinguish the goods and/or services provided by the owner of the mark, with the goods and/or services provided by others.

On the flip side of the coin, what happens when a registered trade mark becomes synonymous with the goods or services it is registered for? This means that rather than being a symbol of the origin of the goods or services and the owner of the mark, the trade mark has become an indicator of the whole goods or services that it was registered for. In such cases, a distinction has to be made between “well-known marks” and marks that have become a “common name in the trade for the product or service for which it is registered”. “Well-known marks” are generally marks that are considered reputable and that the general public commonly knows about, some examples would be Gucci and Apple. Such marks are highly capable of associating the goods and/or services provided with the owner of the mark. On the other hand, marks that have become a “common name in the trade” are marks that have become generic terms, such as escalator.

One of the bases on which a mark is registrable as a trade mark is that it is distinctive as to where the product or service originates from, as provided by the definition of a trade mark under Singapore’s Trade Marks Act (the “Act”), that the trade mark has to be “capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. By becoming synonymous with the goods or services it is registered for and becoming a generic term, the trade mark is no longer able to perform this function. In other words, the trade mark has lost its distinctiveness.

While it is possible that the trade mark will remain registered and the owner of the trade mark will continue to enjoy the rights as conferred by the registration of the trade mark, and the registration of the mark may be renewed, it is possible that an application may be made for the trade mark to be revoked, on the basis that the trade mark “has become the common name in the trade for the product or service for which it is registered” under the Act.

As such, the legal strength of a brand may be evaluated within a spectrum, with well-known marks at one end, and non-distinctive/generic marks at the other.

Business owners should therefore ensure that their trade marks are being used by themselves and/or other parties in a trade mark sense, being a means of identifying goods and/or services offered as being those of the trade mark owner. This would minimize the risk of the trade mark becoming a generic term and thereby allow the trade mark to continue to perform its main function as an identifier of origin.

In a nutshell: stay clear of the wrong (non-distinctive/generic) end of the brand-as-a-trade mark spectrum, to optimise brand value and resilience for business growth.