[Closed] Trade mark / brand protection - I don't understand :-/

quality, quantity, purpose, value or geographical origin of your goods or services

Presumably because they're generic and trade marking them would be unfair since they apply equally to other products - eg you couldn't trademark a picture of a bike and prevent anyone else using it.

If you sell screws you can't trade mark a generic name like 'Screw Shop' since that would be unfair to everyone else who sells screws. Likewise for a geography and so on. This is what the clause is trying to capture.

FYI Also the TM after the mark doesn't really mean anything.

In answer to your question...

No.

Hoover sell vacuum cleaners...a dyson isn't a hoover.

Similarly TomTom don't sell Garmins.

By the way, i've just realised that when you said Merkin, you meant American...don't search for merkins at work.

If you sell screws you can't trade mark a generic name like 'Screw Shop' since that would be unfair to everyone else who sells screws.

Interesting example

[img] [/img]

Similarly TomTom don't sell Garmins.

Is that the point?

[i]describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, [b]purpose[/b], value or geographical origin of your goods or services;[/i]

The Garmin North Arrow part of the logo clearly indicates a cartographic / direction or navigation element.

Trade marks becoming generic is a big issue that the companies who own the marks try their best to prevent. When first registered something like Hoover or Garmin has no link to the goods and is OK. As it gets more popular people start using it interchangeably with the "generic word (GPS/vacuum cleaner) and the company has to be quite careful to make sure it is used correctly in order not to weaken their trade mark protection.

Another example is Portakabin. or Google. They *really* don't like people saying they googled stuff if they have used another search engine.

The Garmin triangle is only a very small part of the logo though (and I wouldn't see it as clearly indicating a navigation element - it looks like a triangle to me!). You look at the mark as a whole.

Screwfix - interesting one. I wonder whether they've got it as a logo mark or word only. You can get away with a lot more for logos as you're not preventing anyone from using the word, just a logo that looks similar.

eg you couldn't trademark a picture of a bike and prevent anyone else using it.

We won't know that until specialized have tried.

Thanks folk - as I guessed, its about as clear as a chocolate teapot.

I understand the generification of brand names issue, but that's a concern for brand owners - usually when registering a trademark or brand, you could never know if this was going to happen.

Time for a bit more digging around methinks.

...geographical origin of your goods...

So anyone can start a business selling trucks made in Leyland, cars made in Bristol, windows made on Everest or bikes made in Santa Cruz and use the name, but not the trade mark ?
That doesn't sound right.

The Garmin North Arrow part of the logo clearly indicates a cartographic / direction or navigation element

Err no it doesn't, [b]you ask someone that doesn't know what Garmin do what their logo denotes and I'm guessing most wouldn't have a clue[/b].

Are you suggesting that it isn't supposed to represent a North Arrow from a map? 😕

Just because some folk don't recognise it doesn't mean it doesn't represent that.

I think that the point is more that if you were trying to trademark the garmin logo with just the N of it then you would run into problems since a 'N' with an arrow is generic. Adding in the full 'Garmin' name means that it's not generic.

Clubber - yeah I get that. It doesn't change the fact that the N and triangle represent the North Arrow on a Map though.
If it is registered in the UK, I bet the IPO didn't notice it either.

Depends how you read:

[i]describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;

[/i]

To me that says you can't trademark picture of a compass for example or a union jack or a map of the UK. You can trademark the Garmin logo because while it clearly does include the purpose of the product it clearly only includes that as part of the design, not as the design itself.

I guess the test would be whether, for example Bryton could trademark their name with a triangle over the 'N' too...

Google. They *really* don't like people saying they googled stuff if they have used another search engine.

They don't like free advertising? Really? Can you provide proof of that?

They don't like free advertising? Really? Can you provide proof of that?

From a quick search - http://www.theregister.co.uk/2006/08/15/google_brand_abuse/

An old article, but should give you an idea.

And the google brand guidelines

http://www.google.co.uk/permissions/guidelines.html

"Use the trademark only as an adjective, never as a noun or verb and never in the plural or possessive form.
Use a generic term following the trademark, for example: GOOGLE search engine, Google search, GOOGLE web search. "

They don't like free advertising? Really?

If a trademark becomes recognised, in law, as a generic description, then it ceases to be a legally protected trademark, as it is simply considered to be part of the language.

If they (the brand owners) don't actively seek to prevent this, by stopping people using the word generically, then this fact (that they are permitting its use other than as a trademark) can be used in a court, and they can lose their protection.

This would not be "free advertising", this would be the loss of one of the most powerful brands on the planet, in the case of google.

Same thing the lawyers for Coke ("Is Pepsi okay?"), Hoover, sellotape, post-it notes, perspex etc. have to do. It's not that they don't want people to talk about their brands, it's that if they become recognised as generic descriptions, then they cease to be brands at all, they become "words".

There have been trademarks 'lost' over this, including: aqualung, aspirin, escalator, heroin, kerosene, phillips (as in phillips head screw), pogo (as in stick), thermos, yo-yo and zipper.

So, in summary, yeah, they really don't like it.

Geoffj - are you really struggling to understand the difference or just being obtuse? Its not a difficult concept that any Trade Mark Attorney (usually also Patent Agent) can explain and in most cases give a clear option on.

Firstly don't assume that because a trademark is not registrable it has no protection it is just a more convoluted process to enforce.

Trade marks are not registrable if they:

describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;

So the following are [u]not[/u] acceptable [b]registerred[/b] trademarks:

"Sofa"
"Comfy Sofas"
"Leather Sofas"
"Cheap Sofas"
"Big Sofas"
"Sofas you can lounge on"
"Scottish Sofas"

But these would be:

"Sofa King"
"Sofa Capital" {but Capital Sofa's might not be]
"Sofa-so-good"
"Safari Sofas"
"Sofast"

They are all 'abstract' terms that don't simply describe the product.

However if you have a logo (rather than just a word) you might be able to register a mark which Included a picture of a giant sofa with the word sofa (for a business called Big Sofas) or a Sofa with a Tartan pattern for Scottish Sofas Ltd - the point being that registering those 'logos' doesn't prevent all the other generic suppliers of large sofa or sofas from scotland from describing their product.

🙄 @ Poly

I still don't get this.
So I could rent a small unit at [url= https://maps.google.co.uk/maps?q=Hope+under+Dinmore&ie=UTF-8&hl=en ]Hope under Dinmore[/url], import some cheap chinese bike components, then repackage and sell them on as "Hope cycle components" ?
As long as I have my own distinctive logo, I can use the name because it simply describes where my shop is ?

@MTG - don't confuse the question of whether you would be able to register a new mark, and the question of whether you would be infringing someone else's existing mark (whether registered or unregistered) or if you might be accused of passing off.

A business based in Hope under Dinmore might find it harder to register as Hope Cycles than one based in Glasgow using the same name. But even they might find registering just the word 'hope' problematic. but the design HOPE with spokes in the centre of the O would be easier. All ignoring the fact that there is an existing Hope Technology who would likely sue you.

@geoffj - does that mean you still don't get it? I'm happy to help you understand but it would probably be easiest to illustrate with specific examples. Lets take the two you cited in the OP. Neither the word Garmin or the word FedEx describe the product or service being offered, your only concern is that the triangle and arrow are in some way references to the products purpose but I think they are sufficiently abstract and combined with the rest of the mark to make them OK. They don't prevent someone else using either a N^ or and --> on its own or as part of a quite distinctive logo. I believe both FedEx and Garmin have valid registered marks in the UK.

I think this might help: http://www.ipo.gov.uk/types/tm/t-about/t-whatis/t-accept.htm Consider the ^ or --> like "WINDOWS" in the example, on its own it would not be OK but as part of a bigger mark it is possible.

MountainBikes was the original brand name of bikes sold by Gary Fisher, Charlie Kelly and Tom Ritchey. Needless to say, "mountain bike" has become a generic description for a type of bike.