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Aleck Ncube

YOUR trademarks are in many ways the face of your business.

They allow your customers to distinguish your products or services from those of your competitors, giving your SME the possibility to better market its goods or services.

Trademarks are not just used as identifiers but are also seen as a guarantee of consistent quality.

A customer who is pleased with the quality of your product or service will continue to purchase it based on the quality expectations.

You should therefore take great care in choosing and designing an appropriate trademark, protecting it, using it with care in advertising and policing its misleading or improper use by others.

While selecting a mark, you should find out whether the envisaged mark or similar ones have already been registered by other enterprises for the category of products or services and markets that you are interested in.

This type of information is obtained by conducting a trademark search.

Doing it early is crucial so as to avoid unnecessary conflicts with other enterprises and loss of resources.

Once you have searched trademark databases for conflicting marks, you should think about finding the best way of protecting it.

Creating or selecting a trademark

Creating or selecting a trademark is no easy task. There are, in fact, specialised companies whose main service is to find or develop an appropriate trademark for your needs.

While there are no hard-and-fast rules of what may be a successful trademark, there are some useful guidelines.

Initially, you should make sure that your proposed mark meets the legal requirements for trademark registration.

Above all, your mark must be sufficiently distinctive to be protectable and registrable with your national and foreign trademark offices.

Inherent distinctiveness will also enhance its easy recognition by consumers.

Moreover, if your trademark includes text (one or more words) you may wish to consider the commonly used criteria for creating, designing or selecting it.

The sign should be easy to read, spell, pronounce and remember in all relevant languages. It should have no adverse meaning in slang or undesirable connotations.

It should be suitable for export markets with no adverse meaning in foreign languages, especially if you intend to commercialise the product abroad.

It should not create confusion as to the nature of the product. It should be adaptable to all advertising media.

Your trademark of choice is likely to fall under one of the following categories:

Coined words (or fanciful words): These are invented words without any real meaning in any language (eg Kodak or Exxon).

Coined words have the advantage of being easy to protect as they are more likely to be considered distinct.

On the negative side, however, they may be more difficult to remember for consumers requiring greater efforts in advertising the products.

Arbitrary marks are trademarks that consist of words that have a real meaning in a given language.

The meaning of such words, however, has no relation to the product itself or to any of its qualities.

As is the case with coined words, while the level and ease of protection is generally high, there is no direct association between the mark and the product requiring thus greater marketing power to create such an association in the mind of the consumer.

Suggestive marks are marks, which hint at one or some of the attributes of the product.

The appeal of suggestive marks lies in the fact that they act as a form of advertising and may create a direct association in the mind of consumers between the trademark, certain desired qualities and the product.

A related risk, however, is that some jurisdictions may consider a suggestive mark too descriptive or not sufficiently distinctive to meet the criteria for trademark protection.

Conducting trademark searches

As a first step to protecting trademarks, you are advised to conduct a trademark search to make sure that the mark in question is not already in use by another enterprise in the target market(s).

Trademark offices in many countries register marks without comparing them with existing trademark registrations and applications received earlier.

Therefore, obtaining trademark registration in such countries is no guarantee that the trademark will not be infringing on the rights of others.

It is therefore important, wherever possible, to search national trademark databases prior to using a trademark for your export operations.

Trademark searches may be conducted through online databases, specialised firms, or at the national trademark registry.

It is important to bear in mind that, while trademarks, which are identical to your own mark can be easily identified, confusingly similar trademarks that conflict with your own will be more difficult to spot.

Depending on the merits of the case, it may be advisable to use the services of a competent trademark agent or attorney for a trademark search for your SME.

Since most trademarks (with the exception of well-known marks) only protect the goods or services for which they are registered as well as those goods or services that are similar to those for which the trademark is registered, your registered trademark may be lawfully used by others for marketing goods or services that are unrelated to those of your SME.

Some common features of trademark registration procedures

In Zimbabwe and some countries, protection of a mark can be acquired through registration or use.

In others, for most trademarks, you have to necessarily register the trademarks if you want to protect them.

Even where you have the option of protection without registration, that is, based on use of the mark, it is always advisable to register the mark to obtain a better or stronger protection.

If you wish to acquire trademark protection for your SME by registration then you must file an application at the national or, where such possibility exists, a regional trademark office.

The office will then, once the required fees have been paid, examine the application.

There are a number of reasons for which your application may be rejected.

In practice, applications are most frequently rejected on the grounds that there is likelihood that consumers will confuse your mark with a mark already on the register or applied for or an unregistered well-known mark.

Your mark only describes a product or service or a feature of the product or service; or consists of a geographical term, which is misleading or should not be monopolised by a single enterprise; your mark violates public order or morality; or consists of or contains without authorisation an element, which is identical with or an imitation of a protected official sign, armorial bearing, flag or other emblem, or hallmark of a state or intergovernmental organisation.

Depending on national laws, the initial period of registration is not less than seven years.

However, unlike other industrial property rights, the registration of marks can be renewed upon payment of a renewal fee.