Phonetic Trade Marks - an overview
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Written on 14
November 2014
Phonetic trade marks
It has become very popular to use phonetic trade marks which
although look different to common words are visually very different.
A prime example of this is ‘Kommunikation’ which phonetically
we know is pronounced the same as ‘Communication’. These are often used
to distinguish their mark from other brands while not being descriptive
of their goods and services.
When an examiner considers the mark the appearance as well as
the sound will be given weight. If the mark applied for is distinctive
to the eye from first impressions then it cannot be void of distinctive
character.
A mark that is a misspelling of a descriptive mark but has
visual distinctiveness should not necessarily be denied trade mark
protection despite being of a descriptive nature.
Where the mark applied for will have a less distinctive
misspelling which the average consumer will not notice on first
impression, the mark is unlikely to be registered. For example the mark
‘Milennium’ is unlikely to be registered as the average consumer will
not notice on first impression that there are two L’s in Millenium.
Where words are often used in speech but very rarely in
written communication, the average consumer will not know if there is a
correct spelling of the word. ‘Cuppa’ is a prime example of this. Used
when asking if someone would like a cup of tea, the spelling will
differ between people as it is rarely seen on paper. Therefore a mark
such as this is unlikely to be registered.
Similarly a word that uses the American spelling rather than
the English equivalent will not be distinctive as the goods or services
themselves will be thought to have originated from America and not the
UK.
Misspellings that are commonly used in the course of trade are
unlikely to be considered distinctive. ‘XTRA’ for example is commonly
used instead of Extra. These are not considered distinctive and
therefore will not be registered alone. If however they are added to
the end of a mark like ‘Fire Xtra’ it is likely to be accepted as
distinctive.
Phonetic marks can be a tricky matter and the registrability
of the marks is not certain.
Written by Thomas Mould
About the Author
Lawdit
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of
Higher Court Advocates and we are the appointed Solicitors to the
largest webdesign association in the world, the United Kingdom Website
Designers Association.
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Article Published/Sorted/Amended on Scopulus 2014-12-04 09:47:31 in Legal Articles
