Achieving trade mark success in a saturated market
Amid information overload and rapid consumerism, trade marks are a key tool in how we choose where to spend our money.
Our pace of life seems to be getting faster, and the resulting stream of choices we are faced with can leave us with decision fatigue.
To help us make decisions when purchasing goods and services, we often rely on trade marks.
But what happens when we are doing this in a saturated market, and how can brands make sure they are distinctive enough to get consumers' attention?
This challenge is particularly applicable to the baby products sector. New parents can face decision fatigue (and actual fatigue) when purchasing, as I know well after recently having my first child.
The global baby products market size was valued to be worth USD 214.13 billion in 2021.
You only need to walk down the baby aisle in a supermarket to see the sheer volume of brands in this market.
New parents are often left feeling overwhelmed and unable to make even the simplest of purchasing decisions, understandably when faced with a range of products and services using similar sounding trade marks and non-distinctive elements such as MAMA, BABY, CHILD and so on.
So, what should new businesses consider when developing a trade mark for a saturated market like this?
Trade mark considerations
At its simplest, a trade mark is a badge that helps customers recognise products or services in the marketplace.
A trade mark can be protected by registered rights or, in some jurisdictions, via unregistered rights acquired by use.
The owner of such protection enjoys the right to exclusive use of the trade mark or sign.
When creating a new business or developing a new product or service, selecting a trade mark is an important step.
Businesses generally want to pick a trade mark which resonates with consumers, helps distinguish them from competitors, is memorable to consumers and will stand the test of time.
However, when selecting a trade mark, you should also consider some legal questions such as:
- whether you are clear to use the mark or does it conflict with an existing earlier right
- whether, if you are clear to use it, you can also secure registered trade mark protection for the mark
- if you secure trade mark protection, how easily you will be able to enforce those rights against third parties
Unfortunately, marks which work well from a commercial and marketing or branding perspective are not always the best choice from a legal perspective.
Getting this wrong may result in an inability to protect your all-important brand or even lengthy and costly disputes resulting in a very expensive re-brand.
This is true of any market, but the process of legal clearance and balancing this with the non-legal considerations, is often more complicated in a saturated market.
There may be so many brands fighting for the consumer attention that you not only have a more difficult job to find a strong name from a commercial perspective, but it is then more difficult to ensure that name does not conflict with the vast number of earlier rights already in the market.
Clearance searching in action
In a saturated market, there are usually many earlier rights (registered and unregistered) which need to be considered.
Those earlier rights may not always be an obstacle to the proposed use and registration, but this assessment involves a careful balance of legal and commercial considerations.
From assessing use in the market to the true scope of the earlier rights and the risk of commercial conflict in practice, clearance searching is about so much more than simply assessing whether one trade mark is similar to another.
The following scenarios provide an idea of what legal clearance checks could reveal, what risks could be presented and how you could move forward:
The name I have chosen is highly descriptive of the product/service but no one else in the market has use of the name, except in a descriptive sense.
As trade mark protection gives exclusive monopoly rights to the owner, there are limitations on securing such rights for descriptive elements which must remain free for others to use.
As an example, while ‘Baby’ might be an acceptable trade mark for products unrelated to baby products, no single entity could claim monopoly rights to use the word ‘Baby’ for baby products.
This would mean that the earlier descriptive use could not be used to block your use as a trade mark.
However, it would also mean that you would not be able to secure trade mark protection yourself and you could not then stop others from using the descriptive word.
In essence, you would be free to use the mark but you would not be able to secure trade mark protection.
In this situation, you could consider combining the descriptive name with another protectable element (e.g. a distinctive and non-descriptive word or even a logo).
This may help overcome the issue of registrability, but you should keep in mind that you would still not have rights for the descriptive element and would not be able to stop others using the word in a descriptive sense.
An element of the name I have chosen is very descriptive of the product/service and lots of other businesses in the market have use and/or registered protection for other marks containing the same element.
This is a scenario commonly seen in trade mark clearance.
In this scenario, the owner of the earlier rights is highly unlikely to have any monopoly rights over the descriptive element alone.
This comes from not only the need to keep descriptive elements free for use by all, but also the fact that when numerous businesses use the same word, it loses its distinctiveness and is no longer seen as an indication of trade origin.
As such, providing the other elements within your mark are sufficiently different from the earlier rights identified, there is unlikely to be a conflict.
In terms of securing your own protection for this type of brand, providing the descriptive word is combined with another non-descriptive and distinctive element and providing that element does not conflict with earlier rights, you will likely secure protection.
However, once again, it should be kept in mind that such protection will have limitations and you will not be able to claim exclusive use of the descriptive element alone.
Your rights will cover the descriptive element in combination with the other element only.
Therefore, you could not stop others using the descriptive element, whether as part of a trade mark or in a purely descriptive sense.
It would also be advisable to ensure the other element(s) of the mark are highly distinctive to reduce the risk of conflict and help your trade mark stand out from the crowd.
There is a risk that a business which has been using a descriptive element for a very long time may try to claim rights in this element due to their long-standing use.
Whether this is possible will depend on a number of factors, but it does present a potential risk factor.
Even if ultimately unsuccessful in making such a claim, if the earlier rights holder looks to block your use or registration on the basis of this claim, they could cause unnecessary delays and costs for your own use and/or registration.
The name I have chosen is completely made up and has no meaning in relation to the product/service, but another business uses the same or a similar name for the same product/service.
This is likely to constitute a block on the proposed use.
In a saturated market, even with the most creative name development, there is a serious risk there will be conflicting rights for the same or a similar trade mark.
When this happens, the options to move forward will depend on the case but it likely would be advisable to select a different name.
In this case you are unlikely to be free to use or register the name and you may ultimately have to select a different name unless you can clear the path to use a registration (e.g. by obtaining consent, challenging the earlier rights etc).
As can be seen, selecting a trade mark is about more than just assessing conflict with earlier rights’ holders and involves considerations of future protection and enforcement of your own brand.
However, while there are significant benefits to being able to secure registered trade mark protection, the most pertinent issue when choosing a new trade mark is making sure it does not conflict with earlier rights.
There may be times when the best name from a commercial perspective is simply not registrable as a trade mark but providing this is not a result of conflict with rights belonging to another party, you may still decide to push ahead with the trade mark.
Ultimately a form of trade mark protection may still be gained by combining the mark with other more registrable elements (a logo, house marks etc) or perhaps the mark may become registrable in time as a result of acquired distinctiveness.
Such protection will however be limited and legal enforcement against third parties will be highly difficult, potentially impossible.
This may be a compromise the business is prepared to make to move ahead with the name which is likely to have the most commercial success from a marketing/branding perspective. In this scenario, consumer education is one of the strongest tools in your brand protection arsenal.
How trade mark attorneys can help you
Whether you are operating in a saturated market or not, the process of trade mark development and clearance is complex.
While many businesses may be inclined to go through this process on their own, the potential implications of getting it wrong can be very costly and professional legal advice should be sought early.
The examination process for a trade mark application in the UK, EU and many other jurisdictions does not involve unilateral refusals being issued on the basis of earlier conflicts.
Instead, it is often up to the earlier rights’ owners to take action if they perceive a conflict with a later application.
With the ever-increasing number of trade marks being filed, the trade mark registers throughout the world are becoming more and more crowded.
This is compounded even more so when considering a trade mark for a saturated market.
In saturated markets, like that of baby products and services, you want to pick a trade mark that will stand out from the crowd and help the decision-fatigued consumer make a quick and informed decision to purchase your goods and services without any risk of confusion with other brands.
The last thing you want is for your brand to be overlooked or confused with another, or worst still, to suffer the negative PR and costs associated with a re-brand resulting from a conflict with an earlier rights holder.
Working with a professional legal advisor will help you navigate this complex process.
We can help balance the legal and commercial considerations of trade mark clearance and help you to develop a strategy for future protection and enforcement of the name you ultimately choose.
Contact a Chartered Trade Mark Attorney for advice on choosing and protecting a trade mark for your business and download a step-by-step guide to creating a strong brand for more information.
Author
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Vanessa Harrow
Managing Director & Chartered Trade Mark Attorney, Novagraaf UK