The amount of protection a trademark receives is determined by distinctiveness meaning how well a mark distinguishes itself in regard to the goods or services it is associated with in comparison to other non-related goods and/or services.
Three important qualities of distinctive marks are:
(1) they are distinct/different from other marks being used to describe or identify similar goods and/or services;
(2) they don’t simply describe the goods and/or services being referenced; and
(3) they are viewed as identifying the source of the goods and/or services. The more distinctive a mark is, the easier it is to register, and the more protection it receives.
According to Abercrombie and Fitch Co.v Hunting World inc., trademark distinctiveness is a spectrum divided into five groups accorded differing degrees of protection:
● Fanciful names
Fanciful names are coined phrases or invented names like Pepsi or Kodak. These work well as trademarks and enjoy reliable legal protection.
Kodak for photography equipment and Pepsi for beverages
● Arbitrary marks
These are words and expressions taken out of context. Simply put, these are generic words but not in the field where they are using as a trademark. From a legal point of view, they make good trademarks.
Examples are: ‘Kasuku’ for books and sportsman for cigarettes
● Suggestive marks
Suggestive marks show something indirectly about a product or service. They need imagination, thought, or perception to understanding what the name/mark represents. These marks can be protected as trademarks and work well from a legal and marketing point of view. It is easier to communicate a brand if there is an indirect connection to the product or service.
Example, ‘chipsy’ for cooking fat, shows that it is for frying chips
● Descriptive marks:
These are names/trademarks that describe the function, characteristics, origin, ingredient, feature, quality, and purpose of a product or service. Descriptive marks can only be protected if they have been used to an extent they become trademarks uniquely when the consumers identify them as indicators of origin rather than descriptive terms. This is known as acquired distinctiveness.It is expensive to get them protected and has a lot of uncertainties.
Examples: Sharp the television/electronics company
● Generic marks
Generic marks use a common name for products or service cannot be protected. They should be free to allow everyone to use the generic name/mark. It is not easy to build your brand on a generic term. Genericized trademarks occur when a particular trademark becomes so synonymous with a class of product or service that it becomes synonymous with all other products or services offered in that class and not the origin of the product or service.
For example, Uber offers an on-demand ride-hailing product, while there are many such products e.g. LittleCab, Taxify it is still commonplace to hear the term “Use an Uber” to mean using one of the other products. Another example is “Omo” the powder detergent, it is quite common to hear one ask for “Omo ya Ariel” or “Omo ya Persil” meaning that they would like a powder detergent but not necessarily the Omo product.
This usually happens against the intentions of the trademark’s owner and is usually a consequence of acquiring significant market dominance..
Importance of Trademark Distinctiveness
Trademark distinctiveness will determine whether a mark/name can be protected or not. The more a distinctive mark is, the easier it is to get registered as a trademark. Having a brand reduces the cost of abolishing infringement cases.
Secondly, marks and names that are distinctive and protectable depend on the degree of distinctiveness. The higher the score in the distinctiveness spectrum, the more protection it receives. It is essential when assessing how reliable trademark protection is against other companies.