Not all marks can function as trademarks and there are certain restrictions on the extent to which exclusive rights can be established
or maintained in relation to trademarks. For example, marks which identify or describe a product or service, or which are in common use,
or which are used as geographical indicators, must remain available for use to anyone. For this reason, a generic term such as ‘apple’
or descriptive terms such as ‘red’ or ‘juicy’ generally could not be registered in relation to apples.
However, in some jurisdictions even trademarks which are otherwise generic or descriptive may be registrable where the public associates
these trademarks with a particular commercial origin or source. This association is sometimes known as secondary meaning (eg. in the United States)
or as acquired distinctiveness (eg. in Common Law jurisdictions such as Australia, Hong Kong and the United Kingdom). In some jurisdictions,
secondary meaning may be established if the trademark owner can demonstrate exclusive use of the mark for a defined period of time.
Evidence of use and tools such as consumer surveys may also be used to show that the public will chiefly associate the descriptive mark
with the trademark owner and its products or services.
A trademark may be ‘registrable’ (ie. be eligible for registration) if amongst other things it functions as a trademark and is not generic
or descriptive. Registrability can be perceived as a continuum, with generic and descriptive marks at one end of this continuum, 'fanciful'
or 'invented' marks (eg. Kodak) at the other end, and ‘suggestive’ marks and ‘arbitrary’ marks lay on the continuum somewhere between these
two points. ‘Suggestive’ marks are marks which have some descriptive quality but which require imagination on the part of the consumer
to identity this quality (eg. the Mercury image for FTD suggesting delivery speed) and ‘arbitrary’ marks are usually common words which
are used in a meaningless context (eg. Apple for computers).
Although these categories are most easily applied in relation to word marks, graphic elements are evaluated on a similar basis. For example,
a pine tree shape is descriptive when used on pine-scented products.
Most jurisdictions exclude some categories of terms and symbols from trademark protection entirely. In addition to generic terms, excluded
marks include marks used for official government business (eg. national flags; the symbols of the modern Olympic Games), marks that are
deceptive as regarding the nature or origin (including geographic origin) of the products or services to which they apply, and marks
that are considered morally offensive or obscene.
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