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When unique is out of reach — the trade marks race

With the world experiencing a boom in trade mark filings, fewer common words remain uncontested for business. So how should companies carve out their unique brand using trade marks?

When Facebook launched its new venture Meta in late 2021, it was far from the first tech company to use a variation of that name.

Within days, a small tech company that had trademarked the name a few months earlier complained Facebook had “committed trade mark infringement” and, after rebuffing an initial offer to sell the name, launched legal action against the tech giant.

While that matter is yet to settle, Facebook splashed out a reported $60 million to buy the name from another meta — this time Metabank.

Yet the World IP database suggests more than 500 other active trade marks relating to computing exist that also use Meta in the name, some dating back to the 1990s.

Widen the search to other classes and there are some 4,000 active Meta trade marks out there, most registered long before Facebook decided it needed a brand refresh.

The story of Meta encapsulates a key challenge for IP lawyers and trade mark attorneys and the businesses they work for — we are simply running out of words.

Trade mark filings boom

The world is currently experiencing a trade mark boom with nearly 200,000 trade mark applications filed through the European Intellectual Property Office (EUIPO) in 2021, representing a 23 per cent jump on 2019.

Oppositions to trade mark applications also hit an all-time high in 2021, with about 20,000 filed with EUIPO.

Worldwide, active trade mark registrations grew 11 per cent in 2020.

But Baker Tilly experts say the market for real words that can be trademarked is increasingly crowded.

“It is a challenge to find a mark that is free to use and to register, especially in crowded sectors” says Jane Kennedy, a Chartered Trade Mark Attorney with UK law firm Freeths, part of the Baker Tilly International network.

“It is a challenge that faces many clients if they are wanting to use standard English words, so that’s when we see creative and coined words.”
– Jane Kennedy

“I’ve noticed that recently in conducting clearance searches for clients.

“It is a challenge that faces many clients if they are wanting to use standard English words, so that’s when we see creative and coined words.”

A report looking at the challenge, technically known as trade mark depletion, last year found 77 per cent of the most common English words exactly matched EU Trade Mark registration, while 75 per cent of English words matched US Trade Marks.

Those words left over are often less than ideal: difficult, kill, poor, sorry, worst, problem, and disease, for example.

Similar issues were seen in European languages, particularly where similar words occur across cultures.

Companies seek to protect not only the trade mark in their home language but translations in various others of the 23 official EU languages. They must also consider terms that might be phonetically similar or that might be mistaken as similar by those who don’t speak the original language.

It’s one of the reasons technology giant Apple was able to successfully challenge the registration of ‘Mi Pad’ in Europe by a Chinese tech company, arguing it was too phonetically and visually similar to the iPad (although Apple also lost a later battle against a technology trade mark for Pear).

“My clients usually come to me and know exactly what they want to apply for in the trade mark and more often than not, I have to tell them to forget it, because they tend to pick descriptive terms.”
– Christian Engelhartd

But convincing a business to abandon a name or brand idea that they love in the face of likely opposition can be a challenge.

“My clients usually come to me and know exactly what they want to apply for in the trade mark and more often than not, I have to tell them to forget it, because they tend to pick descriptive terms,” says Christian Engelhartd, Partner and Attorney at Law at Baker Tilly Germany.

“So yes, there is a tendency to start inventing new words, and that works fairly well, but often they prefer to stick to their descriptive term because they really want it and instead develop it with a logo or some other graphic elements.

“It’s really a creative process.

“If it is a two-part word, they might use one word in one language and then turn the other word around. It can be a very individual process.

“I can give them some guidance, and maybe even some ideas what I think might work, but in the end, it is up to the business to be creative.”

Common words create challenges

Italian IP lawyer and trade mark attorney Matteo Martorana says most of the cases he works on proceed without problems, and usually experimenting with words or adding figurative elements can be sufficient.

But there can still be challenges and he recalls one particular issue where a trade mark using common Italian words — dulcis, which can mean cake, and frutta, which can mean fruit — was rejected.

While common terms in Italian, in other languages they had apparently been considered exotic enough to warrant trade marks.

Where a term or sign is already trademarked, the IP examiner must decide whether the trade mark uses general descriptive terms — such as cake — which would normally have lesser protection than a specific term.

“Most difficulties that we can find are with the translation of the trade mark because I think that there are some terms that have the same meaning in in some languages.”
– Matteo Martorana

EUIPO looks at descriptiveness to determine whether the sign has an ordinary meaning that people would immediately understand that is not distinctive to the goods or service.

So ‘bank’ would normally be refused on the grounds of being descriptive, not distinctive, for example, as would terms like ‘fresh’, ‘health’ or ‘100g’.

“Most difficulties that we can find are with the translation of the trade mark because I think that there are some terms that have the same meaning in some languages,” Mr Martorana says.

“But there are also some terms that are absolutely different from one language to another.

“An example I filed for a client of mine was the trade mark Dulcis in Frutta, and with a prior search, we found a lot of trade marks using the word ‘Dulcis’.

“The examiner did not believe it was weak but we as Italians would see it as a very weak trade mark.”

He believes the view of examiners at the EUIPO needs to reflect the diversity of languages in Europe, and how words might translate between languages or regions.

“Europe is a large area that includes a lot of different languages, and this is a problem. Because if we imagine that a trade mark is also protected, also for any translation of the trade mark, the number of trade marks that you can file is reduced,” he says.

“When I have to search for an earlier trade mark, I have to search an identical trade mark, a similar trade mark, and also any translation of the trade mark.”

Trade mark strategy and business goals

Mr Martorana says it is in the interests of businesses wanting to register a trade mark to be as broad as possible in the classes and variations they file, and that can include registering over a broader geographic area.

While trade marks can be registered at the national level, trade mark protection is territorial, so the trade mark will only be protected in that country.

EUIPO protection covers all EU Member States, while international registration is through the World Intellectual Property Organisation.

Using the Madrid System, businesses can file one application and a single set of fees, to gain protection in up to 126 countries.

“I suggest to the client to file a trade mark for more classes, for more products, because you have to think for the subsequent 10 years and where you want your business to go,” he says.

“If you file all trade marks at a specific moment then costs are reduced, because if I decide to file a trade mark for two classes, and then after two years I decide for another two classes, it is like a new filing — and I might find those classes are now being used.”

“I suggest to the client to file a trade mark for more classes, for more products, because you have to think for the subsequent 10 years and where you want your business to go.”
– Matteo Martorana

Some countries have common law systems that recognise well-known, unregistered trademarks or provide grounds for businesses with a history of use of an unregistered trademark to challenge via competition law, but these avenues often provide limited protection.

For businesses looking to protect the market position of goods or services, Ms Kennedy says securing a registered trade mark in relevant jurisdictions, and promoting it through advertising, marketing, and brand compliance, is essential to assert your rights.

“Advertising plays a really important part, because when your advertising people are putting your brand out, it will be actively in use and seen,” she says.

“The message for customers says this is our trade mark and it identifies the brand owner.

“It is important to educate and push the message to your target consumers, that this is our trade mark. If it doesn’t have our trade mark on it, they’re not our goods/services.

And if large multinational moves in on your name?

“Well let’s stick to Meta — if I had a client who had Meta for similar goods and services, I definitely wouldn’t have rolled over for Facebook,” says Dr Engelhartd.

“Depending on what the client wants, and what their strategy is, I would at least try to get a license or delineation agreement on use— and some benefit for the client.”

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Meet the experts

Jane Kennedy

Freeths UK

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Matteo Martorana

Baker Tilly Italy

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Christian Engelhartd

Baker Tilly Germany

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