Strong brands – from a legal perspective

Trademark Law

From a legal perspective, brands have different strengths. Strong brands can be protected very well and strong brands are also very different from the brands of the competition.

For a strong brand, the brand must insist on a fantasy word or an arbitrary word, i.e. an arbitrary word creation. Suggestive, descriptive, or generic words should be avoided.

The name of the transport service provider Uber can be used as an example of a strong brand, as this brand name is unrelated to the activity and a fantasy word creation. A typical example of such a fantasy word creation is Haribo, which consists of the first letters of the owners.

Other fantasy brands are Persil (from Henkel), Intel, Nokia, Disney, McDonald’s, Toyota, BMW, Pringles, Ariel, and Twix. All of these brands are arbitrary fantasy words. Professional companies that have developed the brand name with professionals usually use arbitrary brand names or fantasy words that have a stronger impact on brand protection such as content.

The arbitrary transfer and use of words can also lead to a strong brand. For example, the smartphone brand Apple (apple) uses the term for technical products and not for fruits. The apple brand would not be registrable for fruits or apples, as it is generic or a category name.

The Apple brand is so strong that a competitor in the field of software development can be prohibited from using a pear logo. Arbitrary use of a term can lead to a strong brand.

Suggestive brands are brands that are not as strong as brands that insist on a fantasy word. Suggestive brands assume a product property or refer to a sub-area of ​​what the brand represents as a product or category. For example, this can be “Strong” for peppermints, a property of chewing gum.

“Easy Credit”, for example, is a suggestive brand that aims to convey the feeling that a loan is particularly easy to get. MrClean (from Procter & Gamble) suggests cleanliness. Milka can also be seen as a suggestive brand because the term sounds like milk and this is how milk is supposed to be contained in the respective chocolate products. Even with car brands, the Mini brand suggests that they are small cars.

Suggestive marks are close to the descriptive mark but are not an accurate description. Suggestive trademarks are often registrable, but not strong trademarks from a legal point of view.

Descriptive marks aren’t actually trademarked. Descriptive trademarks are not intended to distinguish the brand from the products or services as such. Describe brands are lacking distinctive character. They can only be registered under certain special circumstances. Coca-Cola is an example of a descriptive brand (it’s cocaine in cola, so a description of the product).

Coca-Cola has been a brand since 1892 and has to put up with competitors with similar names such as Cola-Cola, TopStar-Cola, Afri-Cola, and Cola-Mix because the generic name “Cola” was used. Although Coca-Cola is so well known and a big brand, it is harder to defend because of the descriptive brand name.

Generic brands are not trademarks. For example, it is not possible to have the brand “bicycle” registered as a brand for the category bicycles. Gym24 is also generic for the fitness centers (Gym as an abbreviation for fitness center and 24 as a description for 24-hour opening time).

Usually, trademark offices check for generic trademarks and refuse to register. Nevertheless, there are a few examples in which corresponding generic terms have been registered as trademarks in the trademark office. However, these trademarks have no trademark power and can be deleted from the register upon request.

Some entrepreneurs shy away from using fancy words for their brand. They are afraid that customers will not recognize which brand is behind the fantasy word or which product is behind the fantasy word.

In some cases, a generic part is then added to the corresponding brands or a corresponding category designation. Then there are brands like “Heinzelmann Bikes” or the like.

It is the case, however, that the descriptive part weakens the brand. The “Heinzelmann” brand for itself is stronger for bikes than in the combination “Heinzelmann Bikes”.

The moment when a trademark is registered for entry in a trademark register is often a good moment to think again about the trademark. If possible, of course, the strongest possible trademark should be entered in the trademark register. A strong brand helps to defend the brand against the competition.

A weak trademark is difficult to defend or it may not even be entered in the register. A mix between a strong brand component and a generically descriptive weak brand component is also not recommended. These types of brands are more difficult to defend and they only weaken the brand.

If possible, a wordmark should always be registered. A wordmark is generally stronger than a figurative mark. In some cases, as in domain law, claims can only be made based on a wordmark. The method of registering a particularly weak wordmark in the form of a figurative mark is normally not recommended and is only an emergency solution.

If the mark is weak and is then changed, for example, by graphical representation of the characters such as the coloring of the letters or the like, there is still no strong brand from it. Normally only a figurative mark should be used if there are really figurative graphic elements in the mark that are to be protected.

The registration of a trademark is also an important decision insofar as the trademark must also be used in this form later. If the trademark is not used in the form applied for, the right to trademark protection is lost. A figurative mark is particularly susceptible to incorrect branding. With a wordmark it is less likely that changes will be made, for example, it is unlikely that letters will be added or removed from a wordmark. With a figurative mark, on the other hand, there is a certain incentive to edit the corresponding images again.

The legal check of a brand or a new brand name can be demanding. It may be that 5 brand names come closer to selection and each of these 5 brand names has 10 variants (50 brands) and should be tested for 20 countries (1000 tests). It may be necessary to test in several Nice classes. This can easily result in several thousand brand collision tests, each of which must also be assessed for its possible risk.

Talk to us for a trademark strategy. We have instruments to perform strategic phonetic or other similarity tests professionally.

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