Are you interested in registering your mark as a trademark and thus obtain protection against its unauthorized use by competitors? Avoid the currently common problem of choosing the wrong phrase to make up a trademark.

What is a trademark?

Perhaps every entrepreneur, at the beginning of his business, was bothered to come up with a brand name under which he would develop his business. In today's marketing-oriented world, special emphasis is placed on the entrepreneur presenting himself and his products under a brand that will capture his uniqueness, originality and special position in the competition.

The brand name in question, if entered in the register of trademarks, is considered to be a trademark. The significance of registration lies in the fact that, consequently, the owner of such a trademark is entitled to require that its competitors do not use the same or a similar brand name in their activities.

In that regard, it should be pointed out that, it is possible to register as a trademark not only signs which consist of words, drawings, letters or numbers, but even shapes or sounds. At present, for example, the registration of the first movement trademark is also pending in Slovakia.¹

What to look out for when choosing word elements?

If you are thinking about the brand name you will use in your business, we recommend that you carry out market research, the purpose of which should be to verify that the same brand name is not being used by your competitors. The basic minimum should be at least a cursory lustration in the commercial register and the trademark register, both registers offering a clear and user-friendly search.

In addition to the above, if you want to register a word trademark, such a brand name must not consist exclusively of the word or words to which general descriptive meaning is given. This means that if you have a designation that is used in common language or is generally used in business (e.g. art trade, CEO, entrepreneur, etc.), then there is a high probability that the Industrial Property Office of the Slovak Republic (hereinafter "Office") will refuse such registration. This is because the purpose of a trademark is to enable the public to determine, based on such a name, from which particular entity the goods and services come. If it is a very general designation, the public will not be able to establish such a link, or such registration could excessively restrict other competitors, as they would not be able to use such a general designation.

As the scope and volume of registered trademarks have multiplied in recent years, the Office is taking a more restrictive approach to the eligibility for word trademarks, which is confirmed by the fact that designations such as "healthy living", " happiness within reach” etc. were registered, although at present these designations would probably no longer be considered eligible for registration. For this reason, it is appropriate to come up with an original and unique word or phrase and avoid general terms.

The Office refuses to register the designation. What to do?

If you have already applied for a word trademark and the Office has delivered you the result of an examination of the registrability in which it states that the brand name cannot be registered because it is not distinctive, or consists of general descriptive elements, or from another similar reason, you have three (3) options:

1. The first option is to object to an examination of the registrability of the designation and to challenge the Office's arguments, for example, if you can show that you are already using the brand name in relation to your goods and/or services and that the relevant public associates the given brand name with your products. This option requires that the facts be proved by relevant evidence (e.g. photographs of the brand name in use, invoices for its advertising and marketing, the website containing the brand name, the domain name, consumer statements, etc.).
2. The second option is to refrain from the attempt to register the brand name as a word trademark and to create a visual logo, where other clear distinctive elements (image, non-standard font, color resolution, etc.) will be added to the words, and register the logo as an image trademark.
3. The third option is to come up with another word or phrase that is unique, original and does not contain general terms and designations.

As is apparent from the foregoing, the choice of the word or phrase which is to constitute a trademark is not simple and requires a comprehensive assessment of its eligibility for registration.