The early stages of an entrepreneur’s business life involve developing a product which will meet a certain need or want in society; or provide a novel way to meet a need or want that has pre-existing, but inadequate, solutions. Thereafter, the entrepreneur approaches a brand designer (or embarks on this him/herself) in order to create a brand that will be associated with the product, business or both going forward. The objectives of the brand designer (or entrepreneur) are to create a brand image that positively associates with the business of the entrepreneur and his/her product, and fits in well with advertising and marketing efforts, such as that they should draw attention to the product; establish interest in the product; be aesthetically pleasing and, obviously, persuade the viewer to buy the product. After all this, the product is launched and hopefully – all things going to plan – the product sells.
However, very little consideration is given by the entrepreneur or the brand designer as to the legal aspects of the brand’s registrability as a trade mark at any of the stages above. This is critical because if the entrepreneur does not consider the registrability of the brand as a trade mark, s/he runs the risk of spending huge amounts of money in advertising and marketing of a brand that lacks trade mark registrability. Furthermore, if at an early stage, the registrability of the brand can be assessed, this money, time and effort can be saved; not to mention the unintended, potential legal risks, implications or difficulties that may be avoided.
In the case of Bergkelder Beperk v Vredendal Koop Wynmakery and others  4 All SA 215 (SCA), the court, quoting from a paragraph in Jacob LJ’s judgment in Bograin SA’s Trade Mark Application  RPC 14, affirmed the following:
‘…the kinds of sign which may be registered fall into a kind of spectrum as regards public perception. This starts with the most distinctive forms such as invented words and fancy devices. In the middle are things such as semi-descriptive words or devices. Towards the end are shapes of containers. The end would be the very shape of the goods. Signs at the beginning of the spectrum are of their very nature likely to be taken as put on the goods to tell you who made them. Even containers, such as the fancy Henkel container may be perceived as chosen especially by the maker of the contents (eg shampoo) to say ‘look – here is the product of me, the maker of the contents’. But, at the very end of the spectrum, the shape of goods as such is unlikely to convey such a message…’
This judgment underlines two very important points: 1.The overall objective of a trade mark is to indicate the origin of the goods or services for which the mark is used and registered. This is the essential function of a trade mark and is critical for registrability. 2. That there are degrees of distinctiveness and hence registrability of trade marks. I wish to elaborate slightly on these points (in conjunction).
The court in the above judgment clearly states that on the one side of the spectrum are invented or fanciful words or devices (for example KODAK or PENTAX for cameras). These are inherently registrable trade marks. At the other extreme (although not specifically detailed in the judgment), are descriptive words or devices (for example APPLE for apples or EXHAUST REPAIR SHOP for an exhaust fitment business). Invented or fanciful words or devices, by their very nature, have the capacity to distinguish the goods or services of an entrepreneur from those of his/her rivals. They inherently perform the “trade mark” or “badge of origin” function that is a requirement for registrability. Descriptive words or devices do not serve that purpose and are inherently unregistrable; unless through prior use, the mark has gained a secondary meaning. However, some descriptive marks are so devoid of distinctive character that no amount of use can remedy their lack of distinctiveness: and hence their unregistrability. Somewhere in the middle of this spectrum, are semi- or quasi-descriptive trade marks. These trade marks may allude, in a clever and/or creative way, to the product (goods and/or services) of the business or their characteristics.These semi- or quasi-descriptive marks are likely to meet the “badge of origin” function and therefore be registrable.
Many businesses like the idea of using a descriptive word or logo as a trade mark, because in their owners’ minds, they are easier for the consumer to associate with their business and therefore easier to recall when the consumer is in the market for their product. However, they do not know that the descriptiveness of their name or logo can prevent them from obtaining registration, if they wish to file a trade mark application for their name or logo. Furthermore, if a rival “copies” their name or logo (or something similar), the remedies in law are not always available to them because of the descriptiveness of their name or logo.
There are many legal considerations to take into account when registering a brand as a trade mark. The above are merely a few. It is always advisable to conduct a full trade mark availability and registrability search in order to consider and deal effectively with these considerations, prior to filing a trade mark application. The trade mark search will also deal with the rights of third parties vis a vis your trade mark, as it is critical to assess whether, for example, there are any pre-existing trade marks which may block the registration of your trade mark. Always seek professional legal advice in pursuance of such a search and the accompanying application in order to get the necessary advice to protect your brand effectively. The earlier you seek out proper legal advice in relation to protecting your brand; the better in the long run – practically, financially and legally.
Usefulness of this blog post
This blog post is geared for entrepreneurs or start-ups that are in the process of developing a product and/or designing a brand to be associates with their business or the product itself. The blog post discusses some legal considerations for entrepreneurs and start-ups to be aware of relative to their brand/s.