Stronger Than the Rest: The Importance of Distinctiveness in Trademarks

By Kavinarasi Thavanendran

Trademarks fulfil two basic functions: (i) to identify the source of goods or services and (ii) to differentiate similar goods or services amongst competitors. In order for a trademark to effectively carry out this “threshold requirement”, it must be distinctive.

Background

This distinctiveness requirement was recently tested in the case where Schweiger, Martin Rainer Gabriel (the Applicant) attempted to register the slogan “STRONG BY CHOICE” as a trademark under Class 25 (shorts, t-shirts, etc.). Initially, the Assistant Registrar (the Examiner) of the Intellectual Property Office of Singapore (IPOS) rejected their application, for a few reasons:

The mark is merely a tagline with clear promotional qualities. Promotional content does not signify the source of goods to the public.
The slogan has a direct and straightforward message that consumers easily understand; to sell durable and lasting goods.
Even if a similar slogan does not exist on the market, it is not enough to automatically show its distinctiveness.
The mark is able to describe and relate to the characteristics of the goods.

The Examiner believed that “STRONG BY CHOICE” was too descriptive as it directly implied the Applicant’s commitment to “providing shorts and T-shirts which are able to withstand wear”.

In response, the Applicant called for a hearing to prove the inherent distinctiveness of the mark. The hearing was presided over by an IP Adjudicator who is responsible for resolving appeals against the Examiner’s decisions.

Is the trademark distinctive?

A distinctive trademark is one that enables consumers to identify the source of the goods or services, without directly describing the characteristics of the goods or services themselves. To gauge the distinctiveness of a trademark, context is important. The IP Adjudicator was of the view that the distinctiveness of the mark must be measured based on the goods or services provided and relevant consumers’ interpretation of it.

Hence, the IP Adjudicator found the mark to be distinctive for the following reasons:

It is highly unlikely that the average person would associate the adjective “STRONG” as an apt description for clothes.
The slogan is ambiguous enough to garner some speculation and cognitive thought among consumers in order to broach its meaning.
The phrase is not common lingo in the clothing industry, and there is no indication that would lead one to believe that other traders would have plans to use it.
Even if the consumers are able to determine the characteristics of the goods based on the slogan, it would have to be “easily recognisable” and affect a “significant portion” of the consumer base.

It is important to ensure that generic or descriptive words and phrases remain free for other traders to use in the market. “STRONG BY CHOICE” – when viewed as a whole phrase and not demarcated into individual words – is neither descriptive nor generic. The IP Adjudicator accepted the Application, which was certainly the outcome the Applicant sought.

This case is a good example to entrepreneurs who choose partially descriptive or suggestive trademarks for their businesses. Such marks can be registered if the Examiner views the mark not to be “directly descriptive”. It is ultimately the discretion of the Examiner. If the trademark is coined or arbitrary, the process of seeking registration is usually less cumbersome, and less costly.

Want more insights on what makes a strong trademark? Drop us a line at kass@kass.asia!

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KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.