Trade Marks: “What’s in a name?”

You may feel that what you call your business or product is not overly important, but it should be borne in mind that a trade mark (or brand) is a valuable asset. It can create an impression or convey a certain message about a company or product. As such, consideration as to what something means in English and other languages, is highly important when adopting a new trade mark. Below are some reasons as to why it is crucial to select a mark which is fitting of your business:

  1. Whilst a descriptive name, such as “OVEN CLEAN” for oven cleaning services, may inform consumers exactly what your goods or services are, you should be aware that it will be very difficult for consumers to remember you and differentiate you from others in the marketplace. As such it will take you much longer to acquire a reputation in the marketplace than it would if you adopted a more memorable name;

  2. A descriptive mark may not be registrable as a trade mark and it may be difficult for you to prevent use of the same or similar mark by a third party. Whilst it is possible to secure registration on the basis of acquired distinctiveness through use, it will be much more expensive. This is due to the huge amount of evidence which will be required, in order to demonstrate that you have acquired a reputation in the mark;

  3. Careful consideration needs to be given to the meaning of any name you adopt, as you don’t want to find that it means something inappropriate, or is simply at odds with the product itself;

  4. Consider your target audience and where you are pitching the product within the market. If you are planning on introducing a value product to the market, don’t use words such as PRESTIGE or PREMIUM in the name. Similarly, references to “value” will not help sell a premium product;

  5. Avoid choosing a mark which incorporates a reference to your goods/services, as this could cause problems if you later decide to diversify and expand into different areas. For example, if AMAZON had originally adopted a trade mark which incorporated a reference to books, the name would not be a great trade mark for the company it is today;

  6. If your business is likely to expand to, or sell in overseas markets, checks should be made as to what your chosen trade mark means in other languages. It will not be good for business if the name is inappropriate or offensive in another language. The following are some examples of trade mark blunders when it comes to using a trade mark in another country:

    • The Vauxhall NOVA didn’t sell well in Spanish speaking countries as “nova” means “doesn’t go” in Spanish, hence the change to Vauxhall CORSA

    • The name of an aeroplane, R432, had to be changed in Japan as the number “4” is unlucky in Japanese, as it sounds like “death” – not great for an aeroplane!

  7. When translating a name into another language, make sure that it is translated correctly. Parker Pens slogan “It won’t leak in your pocket and embarrass you” was incorrectly translated into Spanish and ended up as “It won’t leak in your pocket and make you pregnant”!

  8. When expanding into territories which do not use Latin script, such as China, it can be tempting to use a simple transliteration. However, this can also result in some inappropriately named products. Even the large brands have been known to get this wrong:

    • Coca-Cola; an initial transliteration of COCA-COLA into Chinese (ke-ke-ko-le) was found to mean “bite the wax tadpole” or “female horse fastened/stuffed with wax”. The mark was eventually changed to “ke-kou-ke-le” which means “happiness in the mouth”, which is a much more appropriate mark!

    • KFC; a transliteration of the slogan “finger-lickin good” in China was found to mean “eat your fingers off”

Whilst you will not know at the start of your business journey, where you may end up, the above highlights that some careful consideration is required when adopting a company or product name. This will enable you to avoid choosing an inappropriate trade mark, reducing the likelihood of making a costly mistake.

trade marksPhil Sanger