How to protect weak trademarks

The recent rejection by the Brazilian Patent and Trademark Office (PTO) of the well-known Selaria brand, owned by famous luxury store chain Richards (part of Inbrands), has reawakened debate on an old topic: what defines the strength of a trademark? According to legal doctrine, trademarks are categorised according to their degree of distinctiveness and, in turn, their enforceability against third parties, and are classified as fanciful, arbitrary, suggestive, evocative, descriptive or generic.

Strong versus weak
Trademarks are regarded as strong when they have no connection with the product or service they identify on the market. Examples of these kinds of trademark are fanciful marks without meaning which have been created (eg, HAAGEN-DAZS) and arbitrary marks which, despite having a semantic meaning, have no link to the products that the company offers (eg, APPLE).

Trademarks regarded as weak evoke an association with the products or services they identify, whether directly or indirectly, and are classified as suggestive, descriptive and generic, depending on the type of association. Descriptive and generic trademarks convey the product or service sold under the brand directly to the consumer and, as they are regarded as weak trademarks, registration is prohibited by law. One example would be the use of the word 'tea' to designate a brand of teas, as this would be regarded as generic and could not be registered. Similarly, the term 'fastapp' for a brand of telephone apps would be regarded as descriptive and could not be registered.

As for suggestive or evocative trademarks, although they may be regarded as strong by marketing professionals, they could be considered weak legally because they require effort by the consumer to associate them with the product or service offered (eg, the IBIZA CLUB brand for nightclubs, referring to the Spanish island which is world famous for its parties). Their presence on the market could lead to misinterpretation by the public as a whole, as if they were generic or descriptive.

Risks of weak marks
The inherent risk of weak trademarks increases when the regulators (judges or PTO examiners) are influenced by false premises. However, this does not rule out this type of brand being registrable. This appears to be what happened when the PTO rejected the registration of SELARIA, a brand which applies to various kinds of shoe and leather accessory. In principle, the mark should have been classified as suggestive, considering that there is no immediate link between an establishment where saddles for horses are sold or made (the definition of the Portuguese word 'selaria') and shoes or leather accessories for humans. What might exist is a correlation between some places where leather products are usually used and those where saddlery products (ie, selarias) are found. However, this association is not immediate or direct. Despite this, the PTO regarded SELARIA as a descriptive or generic term. The PTO had the same understanding when another company's mark, SELARIA INGLESA ORIGINAL GOODS, was registered with the disclaimer of no exclusive rights to the word elements to identify “footwear, sandals, flip flops, shoes, belts, all made of canvas”.

At that time the PTO used a disclaimer in which the trademark could be registered provided that it did not have the exclusive use of all the nominative elements, with the protection valid only for all the elements together which formed the trademark. As a result, the choice of the disclaimer made clear that the PTO believed the word 'selaria' would be weak for leather products and services, although there is still some controversy over this interpretation.

Strengthening marks
Therefore, in order to avoid the grey area surrounding the protection of weak marks, rights holders should take the four following steps to strengthen their marks:

• Carry out a prior search to see whether the proposed trademark has already been filed or registered by a third party.
• Avoid any direct and immediate link between the trademark and the particular product or service.
• Associate the weak trademark with a combination of distinct varied elements, such as individualised and bold logos or a previously registered trademark.
• Avoid forming phrases, in any language, composed of a noun + verb + adjective or an adjective + noun.

The protection given to a weak trademark is limited, particularly compared with the power to enforce a fanciful trademark against third parties. Therefore, choosing to use this kind of trademark involves greater risk, as the rights holder's investment might not result in a monopoly. Nevertheless, if a rights holder chooses this path, the steps set out above will help it to register a mark regarded as weak, although the individual terms involved may not be exclusive.