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Wednesday, 15 June 2016

Why Descriptive and Laudatory Trademarks Cannot Be Registered


Great Idea, But Bad News

You might have been sitting around with a bunch of friends over dinner. One of your friends points at the chicken and says, "Why don't we just register a brand of chicken called The Good Chicken?" And the bunch of friends laughs and applauds the idea. 

Your friend goes home, sobers up, and starts to think about The Good Chicken. It's such a great idea. He wonders why nobody ever registered "The Good Chicken" before. Surely it deserves to be registered and made the basis of a great marketing campaign! He closes his eyes and he can see it: Lines of people just queueing up outside of his chicken restaurant, just to get a taste of The Good Chicken. The daily special? Damn Good Chicken. The weekend special? Superbly Good Chicky Chicken. 

So he hires a trademark agent, who takes a look at the proposed trademark, and smiles somewhat sheepishly. "You sure you want this?" the trademark agent asks. "Why yessirree," goes your friend. "And I'd like fries to go along with it, if possible." The trademark agent smiles sheepishly again and goes off to do his thing.

Two months later the trademark agent is back. "Sir", he says rather slowly, "the trademark office has rejected your application because of the laudatory and descriptive nature of your proposed trademark. I'm afraid that you'll need to think of a new trademark or appeal."

Your friend is stunned. What! he wonders. The Good Chicken is a good trademark. Why not?

Here is why not.



No-no #1: Descriptive Trademark

Think about it. "The Good Chicken" is your friend's trademark. Does it describe anything? In the English language, the noun comes after the adjective. The last word is the noun. And the noun is "Chicken". So this is a mark that will be used to market..... chickens! 

That's precisely the problem, because if your friend is allowed to registered "Chicken" for his brand of chicken / poultry, no other chicken / poultry brand can use the word "Chicken". And that would be disastrous for them!

So that's why your friend cannot use a descriptive trademark. Another example I once learned was the case of the toothpaste brand that was marketed with a logo depicting -- no surprises here -- trademark being squeezed unto a toothbrush. If that trademark application had gone through, others could have been prevented from showing that image on their trade packaging, printed materials, et cetera. It would have been bad for the toothpaste industry. 

No-no #2: Laudatory Trademark

Let's go back to the trademark: "The Good Chicken". See that word in the middle? "Good", means positivity, and it means superiority. It means that the product is being lauded as a superior offering. "Good Chicken" implies that other chickens being sold are not "good". And what is not good is often mediocre, if not outright bad. (It could also be not "good" because it is more than good, i.e. superb or fantastic or wonderful.... but those would be descriptive as well.)

So, by calling his brand the "Good Chicken", his competitors are at a disadvantage. Unless they invalidate his trademark, theirs would be perceived as not "good". Unless, they start using laudatory words like wonderful, fantastic, or superb. And if that happens, it will be a war of self-laudatory words. Each describing his own or her own as the best.

Fortunately, the law does not allow self-laudatory trademarks to be registered. 

Conclusion

In the book by Charles Dickens, Oliver Twist, a character says that "the law is an ass". Fortunately, the law of trademarks does not allow laudatory and self-descriptive trademarks to be registered. This means that the law is not an ass, but a guardian of fairness and equality in the application of wonderful, fantastic and superb trademarks. The trademark law in Malaysia is a Good Law. (Unfortunately, that phrase cannot be registered.)
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