By Candace Westby
Trade Mark Examiner
Ms. Westby works for CIIPO, which provides information about IP protection in the Cayman islands. Get Creating Cayman is a regular column on your rights and responsibilities under Cayman’s IP laws. For more info, visit email email@example.com.
Is Your Trade Mark Registerable?
We now know that ‘trade marks’ — which can also be referred to as ‘word marks’ or ‘logo marks’ — are unique ways of identifying products.
However, not every ‘unique’ logo can be registered under the law. So here are a few questions to consid-er before applying for your mark to be registered. Is your trade mark highly fanciful; a made-up word; or an image that allows your products or services to be immediately iden-tified?
Fanciful marks are those marks whose only function is to serve as trade marks. They are considered to be the strongest type of trade mark, as they are usually made-up words, or common words that have no re-lation to the goods or services they’re applied to. Some examples of fanciful trade marks include SAMSUNG, KODAK, and APPLE.
Your trade mark may also include words, symbols, letters, numbers, logos, colours, or any combination of these. More specifically, a word mark registers a word or words on-ly; and a logo mark gives rights for a combination of images, designs and words (you may also want to apply for a logo mark in specific colours).
Here are a few examples of logo combination marks:
You should also decide whether your mark may be considered offen-sive, misleading or generic. For ex-ample, marks that have offensive words, and marks that claim to have a certain characteristic (such as be-ing ‘organic’ when they are not) may be refused registration. If your mark is a common term in the trade, such as ‘laundromat’ for a laundry shop, it will be refused registration.
Before applying for your trade mark to be registered, also consider whether your mark would be con-sidered distinctive or descriptive.
Distinctive trade marks have no other meaning except to identify their specific goods or services; or they are common terms used in re-lation to arbitrary goods:
• Lotus for software
• Red Bull for energy drinks
Descriptive marks clearly describe the goods or services you provide:
• GRAPE soda (describes flavour)
• LIGHT for laptops (describes computer’s weight)
People love to express their national pride by incorporating national or organisational emblems, coats of arms and flags in their mark. But registration of state symbols, flags or other protected emblems are prohibited unless you have the per-mission of the respective govern-ment or international organisation.
If you want to incorporate the Cayman Islands national symbols in your mark, you must provide the trade mark examiner with proof that you have permission to use it. Other-wise, your mark may be refused reg-istration.
So now that you know what to con-sider when designing your trade mark, let’s get creating Cayman.