Fancy vs Descriptive Brand Name – which is best for Trademark Protection?
In my opinion, a good business name should not be descriptive and generic – consisting of ordinary English words.
Watch Video → Fancy Business Names Auto Defend Against Infringement.
Fancy business names are inherently distinctive and provide strong shield of protection against any infringements than descriptive names.
Descriptive Business Names Which Failed to Protect Brand Exclusivity
Descriptive and generic business names, even if trademark registered, cannot be distinctive enough to protect themselves, except if infringed in bad faith. [RD]
Watch Video → Descriptive Business Names Fail to Defend Against Infringement.
It is evident from UDRP decisions of WIPO that even disclaimer on website is not necessary when using a brand name similar to a highly descriptive name of other party, while using it in good faith. [RD]
It is even more difficult to protect descriptive marks which are unregistered (having only common law rights), especially when it is not a distinctive brand name. [RD]
For example, in November 2021, Air Charter Service of Australia, could not stop another party (AVMIN) to have a domain <aircharterservices.com.au> (addition of ‘s’ in word ‘services’) because ‘air charter service’ is a descriptive brand name. [RD]
For another example, in October 2021, SEAJOB (seajob.net) could not restrain other party to register and use ourseajobs.com because of descriptive nature of SEAJOB as business name. [RD]
Black Card LLC was the owner of ‘Luxury Magazine’ which was trademark registered with the European Union. Black Card LLC is also the owner of www.luxurymagazine.com domain name but it could not prevent other party to have registered luxury-magazine.eu, because according to judges, the term ‘Luxury Magazine’ is a highly descriptive business name using ordinary English words. [RD]
In 2022, Reassure Midco Limited, United Kingdom could not legally restrain John Foy from Ireland, from registering a descriptive domain name <reassure.ie> because according to the judges panel, REASSURE is plainly a descriptive and dictionary word having meaning. [RD]
Nike (nike.com) complained against the registrant of <nike.dev> domain but the claim was rejected because ‘nike’ is dictionary word and Nike Innovate C.V. could not prove that the domain was used in bad faith. In 2021 decision (WIPO D2020-3067), the judges panel observed that another important lesson is that a famous trademark, such as MARLBORO or NIKE (or APPLE) which are also dictionary terms, does not necessarily give its owner the right to recover any and all domain names which contain the famous mark and nothing more. [RD]
Similarly, Arnott Europe is the owner of <airsuspensionshop.com> domain and dealing globally in air suspension products.
However, Arnott Europe failed in a legal case to restrain Miessler Automotive GmbH of Germany from registering the similar website domain (air-suspension-shop.com) which successfully claimed that the terms “air”, “suspension” and “shop” are generic words in the public domain which cannot be protected by any trademark rights. [RD]
Generic, descriptive, and meaningful dictionary words are relatively more susceptible to dangers of trademark infringement. It is difficult to protect generic trade names. Such as if you are selling cars, and you have bought the domain <cars.com>, it will nearly be impossible for you to protect the brand in court of law.
Fanciful Brand Names Strongly Protect Themselves Against Trademark Infringement
On the other hand, fanciful, catchy, non-dictionary, and meaningless brand names have better chances of protecting their brand names exclusivity from infringement.
For example, in 2022 the fanciful business names OANDA, SODEXO, ONEY, INSTAGRAM, IKEA, VIVENDI, CANVA, IQOS, VIAPLAY, SERCO, successfully protected the rights of their brand names as detailed below. [RD]
OANDA through legal course restricted others from using their fanciful name in domain names. So, the domain names <oandan6.com>, <oandan8.com>, <oandan9.com>, and <ooandan.com> were transferred back to OANDA in 2022.
SODEXO is another fanciful brand name. The ownership of illegally registered <sodexo-ltd.com>, <sodexo-ca.com>, <sodexoeu.com>, <sodexho-it.com>, <sodexojobs.net>,<sodexio.com>, <portalsodexo.com> and others were transferred to the original brand SODEXO.
Similarly, as ONEY is a fanciful, catchy and distinctive brand name, and <oney.finance> was being used in bad faith so it was transferred to ONEY.
According to WIPO judges, INSTAGRAM trademark is a fanciful name with no meaning, so in January 2022, <lnstagramaccountverificationpage.com> was ordered to transfer to Instagram.
IKEA also restricted other party to use <ikea.ge> domain name. As per judges panel, IKEA is a fanciful and most well-known trademark.
Similarly, in 2022, the domain name <vivendisecsettlement.com> was registered in bad faith and so it was transferred to VIVENDI which is a fanciful and distinctive brand name.
CANVA is a fancifully coined catchy business name of an Australian graphic design company. In 2022, it successfully protected its unique fancy name and the infringers had to return (transfer) the unlawfully registered domains of <canva5.com>, <hellocanva.com>, and <hoccanva.com>.
IQOS another catchy and fanciful brand name won back the unlawfully registered domain name of <weselliqos.com> in March 2022.
VIAPLAY a fancifully coined business name successfully protected its brand name from infringement and thus <helpviaplay.com> and <wwwviaplay.com> were transferred to Viaplay.
In May 2022, Zhichao Yang from China had to transfer <serco-career.com> and <sercopayslip.com> to SERCO which is fanciful and inherently distinctive name.
Therefore, we can conclude that we should coin a fanciful brand name for our business venture, so that we can better protect it from possible infringement attempts in future.
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