Is my trade mark generic?

My domain name (sort of) describes my business – I’ve been told that it’s generic and that I won’t be able to get a registered trade mark to protect the domain name, and I wanted to know if that’s right?

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Alasdair Taylor's Answer

The Trade Marks Act 1994 which governs UK registered trade marks doesn’t actually use the word “generic”, but there are several categories of name that won’t be registerable on this sort of ground.

These are set out in Sections 1(1) and 3(1) of the Act:

In this Act a ?trade mark? means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

The following shall not be registered – (a) signs which do not satisfy the requirements of section 1(1), (b) trade marks which are devoid of any distinctive character, (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade: Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

Registered trade marks are always registered in respect of some specific goods and/or services. Whether a given name is registrable as a trade mark may depend upon the goods and services in respect of which the application is made.  For instance, BANANA will not be registrable in relation to bananas, but fruit names may be regsitrable in respect of other goods and services – think computers or telecommunications.

As I don’t know what your domain name is, I can’t comment on the applicability of these sections in your case.

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