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Starting out: Choosing your brand name

Choosing a brand name is an exciting part of getting your business started or bringing a new product range to market. However, you must choose your brand name with care. Avoid descriptive words and check that the name is not taken already.

Avoid descriptive words

Naturally, there is a temptation to choose a name which describes your product, or your service. If you are opening a car wash, say, you might want to call it ‘Fast Wash ‘n Wax’ — therefore telling everyone that your services are quick and that you wash and polish cars. Right?

Well, wrong.

A brand name that merely describes the nature and/or qualities of the product or service is not a good choice. Many other car wash operations will also want to tell the public that their wash ‘n wax services are fast. A descriptive brand name will not perform the important function of distinguishing (setting apart) your business from that of your competitors.

Section 9 of the Trade Marks Act states that a trade mark must be capable of distinguishing the goods or services in respect of which it is to be registered from the goods or services of another person.

Section 10(2) of the Trade Marks Act states that a mark which consists exclusively of a sign or an indication which may designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or rendering of the services cannot be registered. Also, a mark which consists exclusively of a sign or an indication which has become customary in the current language or the bona fide and established practices of the trade shall not be registrable.

Therefore: create or adopt a name which is not descriptive and does not praise the virtues of your product. Make it original. In trade mark speak, make it ‘fanciful’. Remember, your brand name is supposed to distinguish your product from the similar products made by your competitors: NIKE, ADIDAS, PUMA, SKECHERS and VANS are all brands which distinguish the different kinds (and sources) of sneakers. However, if your chosen brand name, say, is COMFY-SNEAKER, this distinguishing function cannot be applied because the name is just a description of the product.

FNB had registered as a trade mark the word PREMIER, which it used for banking services and which it placed on credit cards and cheques. Barclays brought an application to Court for the cancellation of the registration, and one of its grounds for doing so was that the word premier is reasonably required for use by others in the trade of banking services. The Court agreed and ordered the Registrar to cancel the registration.

It is probably well known that sweet piquante peppers, sold under the trade mark PEPPADEW, are a South African variety of chilli peppers. The original owner of this brand tried to prevent registration of the trade mark PEPPAMATES for a range of food products. It was unsuccessful, because the Court said that ‘peppa’ is just another way of saying pepper and it is therefore a word open for anyone to use as a name for such product types.

Do not adopt a brand name that is already registered by someone else. You do not want to have to scrap labelling and packaging, withdraw advertising material, and say goodbye to the wasted expenses because your new brand name infringes someone’s rights. Search the Trade Marks Register first to determine whether a mark is available.

You can do the search yourself by registering on the CIPC website, here: www.cipc.co.za. However, it is (highly) advisable to have this search done by a qualified trade mark lawyer. There are also search services available from private organisations.

A search will only give information about marks entered in the Register — whether awaiting registration (that is, pending applications), or granted, and even trade marks removed from the Register. It does not give information about common-law marks. However, if you are going into the car rental business, say, or manufacturing soft drinks, you will already know your marketplace and you will have researched your potential competitors. You will know what brands are in the market, whether they are registered or not.

If you are in doubt about any common-law trade mark that might conflict with your new brand, ask a qualified trade mark lawyer for an opinion.