Give a Good Account of Yourself

Photo from thinkpanama, some rights reserved.

Jeremy Phillips venerable scrivener-in-chief of the IPKat tweeted on Thursday about a meeting with his new bank manager:

Professor Phillips went on to explain that:


Now, my role often exposes me to the early stages of product naming at HotShot Bank Inc and should put me in a position to fully understand the reasoning behind bank policy on branding and product naming.

We have a branding policy which provides that all new product names should be descriptive, and a trade mark policy which provides that all new product names should be cleared and registered as trade marks where appropriate.

The keen-eyed among you may have noticed a dichotomy here.  Descriptive names cannot be registered as trade marks.  This is a well accepted principle of trade mark law, and prevents the Rubbery Tyre Company from registering “RUBBERY” as a trade mark in relation to its tyres.

For many years, as Professor Phillips points out, consumer banks in the UK have got round this issue by applying for trade mark which mask the descriptive nature of their account names with some distracting distinctive element – usually an existing house mark.  This enables them to obtain registration for names like “Fancy Bank Current Account” and “Fancy Bank Gold Card” despite the fact that “current account” and “gold card” are clearly generic in the industry, and potentially purely descriptive.

This practice has also relied on a whole world of unspoken co-existence between the banks as they all sit back and allow their competitors to register effectively identical marks, so long as they are preceded by a differentiating house mark.  As a result Fancy Bank will turn a blind eye to the “Posh Banking Corp Current Account” and “Posh Banking Corp Black Card” (let’s face it, Posh Banking Corp would be a little more exclusive, wouldn’t it?).

So what effect does this have on brand recognition?  Well I would wager that most banking customers couldn’t tell you the name of their main bank account.  Or at least not the name that their bank knows it by.  They will know which bank it is with (we hope), but they will most likely just refer to it as their “current account with My Bank”.  They may, if they hold a premium account with a bank refer to it by its full name, (perhaps the Fancy Bank La-di-da Account?) or just generically as one of those premium accounts with Fancy Bank.  Either way they will see it as their current account or premium account with Fancy Bank, not their Fancy Bank Current Account® or Fancy Bank La-di-da Account®.

Photo from Robert Stokes, some rights reserved.

So how do the banks differentiate their accounts?  They might spend millions on getting sports stars to endorse them and appear in posters, they might spend hundreds of thousands on TV and poster advertising, but really all this does is push the house mark.  I would wager that the majority of new customers who walk into a branch of Fancy Bank having seen their fancy new poster campaign will just ask to open “a new account”, or maybe “that new account with whatshisface in the ads”.  Not many of them will ask to open a “new Fancy Bank Exploso-Account”.  Of course many of them will ask to open “a new current account”, but importantly they are asking for this in a generic sense rather than the ® sense.  So to an extent the trade mark of “Fancy Bank Current Account” has already served its purpose as an indicator of the source or the services when the customer walks into the bank.

So to what extent does the registration of “Fancy Bank Current Account” serve any purpose?  Well it doesn’t.  Does it even act as a trade mark?  No it doesn’t.  Does that mean banks with stop registering these names?  No it doesn’t.  The risk adverse will still go ahead and assume they get some protection for their use of “Fancy Bank Current Account” despite the fact that it really offers no more protection that their hundreds of other registrations for Fancy Bank, but to use an old law school analogy, in a game of Ring of Fire, no one wants to be the first to break the circle.