How to assess a trademark’s descriptiveness

by | Aug 23, 2021 | Filing, General, Insights | 0 comments

A trademark cannot be registered if it describes the product or services. Descriptive marks are non-distinctive. Assessing descriptiveness can sometimes be difficult. Often companies think that descriptiveness is a narrow concept. For example, “Tasty” would obviously describe a chocolate product, or “Beefy” a meat product, but beyond these very simple and straightforward examples there are many not so obvious ways a trademark can be found descriptive. According to EU trademark regulation, descriptive trademarks are those that consist “exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service“. Here’s a breakdown of different ways a trademark can describe goods or devices. Kind. This refers to the product or service itself, i.e. its generic name, or its type or nature. For example, the name “MILK” for milk products would be covered by this. This also applies if the mark describes only part of the product. For example, the trademark “EcoDoor” (immediately understood as an ecological door) was found descriptive of fridges and other appliances.  Quality. This can easily be understood to refer to laudatory terms like “Deluxe”, “Durable” or “Light”. However, there are many other ways a trademark can describe the quality of the service. For example, the expression 24/7 refers to the fact that the product or service is available at all times, or 1.7 in relation to cars would be perceived as a reference to engine size (volume). Quality does not only refer to superior quality, it can also be a neutral expression that does not necessarily refer to the product being any better or worse. Quantity. Sometimes there are numerical expressions that can describe the product. This can happen, for example, if the product is sold in certain quantities. For example, beer is often sold in six-packs and cigarettes in packs of 20. Accordingly, “6”/”Six” and “20”/”Twenty” would be descriptive of beer and tobacco products. Similarly, this could be applicable for many packaged consumer goods. For example, water is sold in 0,5L and 1,5L bottles and chocolate in 50g bars. If the number has no particular connection to the product, it is not considered distinctive. For example, the number 501 for jeans is acceptable as the number 501 does not have any apparent relevance or descriptive quality for jeans. Number 34 would not be acceptable, as it describes quality (length or size of waist, see above). Intended purpose. This could be a couple of different things. It could refer to the desired end result or what to do with the product. An example could be the trademark “Slim” for nutritional supplements (this refers to the end result, i.e. by taking the product you become slim”). Similarly, the trademark Therapy was refused for massage tools. Value. This can refer to price or more generally that the product is good value for money (cheap, affordable, “bang for the buck”). There is an obvious overlap between this and quality (see above). Geographical origin. Geographical terms are often difficult to assess. Such terms include names of cities, countries, lakes and rivers, or other geographical terms like “tundra” or “polar”. Geographical terms are not automatically disqualified for trademark protection. For example, Montblanc is a famous brand for pens and leather products. A problem occurs when the geographical term is linked to or associated with the product or service in question so that it could be realistically thought to be the place or production or rendering of the service. Going back to the above example, Mont Blanc, the highest mountain in continental Europe is clearly not a point of production for pens and wallets. Equally, the North Pole could be a trademark for ice cream or snowmobiles. On the other hand, Milan or Paris could not be a trademark for clothing or cosmetic products since both cities are globally known as fashion centers.  Time of production of the goods or of rendering of the service. This can also overlap with quality, for example, the expression 24/7 or 247 would be covered by this. For some industries, this is more relevant than others. For example, 1998 in relation to wine would be understood to mean that the wine is of that vintage, but for bananas the same number is completely meaningless. The relevant question is whether the number or numerical expression bears any relevance to the product or service. Other characteristics of the goods or service. This final part is just to make sure that the list above is not exhaustive. A name can describe a product or service in a variety of ways and if that descriptiveness is not captured in the above mentioned ways, it does not mean that the mark cannot be refused for being descriptive. For example, such characteristics could be an indication who the product is targeted, such as “kids” for snack bars. How to assess descriptiveness in real life? The above examples are simple and stereotypical, but real life is often more complicated. Often a trademark is not clearly descriptive or clearly distinctive, but somewhere in the middle grey area.  Also, descriptiveness is often not neatly in one category only. For example, the trademark PARIS 2024 is a mixture of geographical origin (Paris) and the time of rendering the service (year 2024). It informs directly that something is happening in Paris 2024. Here are some basic points and tips to keep in mind when assessing whether a trademark is descriptive: 👉 Descriptiveness is assessed in every EU language or language that is understood by the population in the EU. For example, Russian is understood in parts of Baltic countries and Turkish is understood in northern Cyprus. Therefore, if a name is descriptive in Russian or Turkish, it cannot be registered as an EU trademark. 👉 What is said above about descriptiveness is not limited to words. The same is true for figurative elements. For example, the commonly used recycling symbol is descriptive for recycling services. Also, abbreviations and acronyms can be descriptive just as the words they refer to. For example, the acronym ABS with respect to cars is commonly known to refer to anti-lock braking systems. Similarly, for many products and services the acronym DIY (do it yourself) would be descriptive. 👉 Descriptiveness is assessed in relation to the relevant goods and services of the trademark. A term could be descriptive for wines but not for building products (and vice versa). 👉 It is often difficult to say whether a name is descriptive or not. A name might have some descriptive meaning but also contain some distinctive elements. It could be a misspelling or an invented word. The relevant question is whether the descriptiveness is direct, concrete and specific, so that it is understood without further reflection. Marks that have indirect descriptive qualities are called “suggestive” trademarks. Suggestive trademarks are registrable (distinctive). Examples include DURACELL (batteries), TANGLE TEEZER (hairbrushes) and SHOPIFY (online platform for online retail services). 👉 Simple and common misspellings do not typically make an otherwise descriptive trademark distinctive. Rejected trademarks include FRESHHH (fresh), RELY-ABLE (reliable) and XPERT (expert). If the misspelling is very unusual or striking, it can make the trademark non-descriptive and registrable. Accepted trademarks include D’LICIOUS and FANTASTICK. 👉 Adding a top level domain name does not make the otherwise descriptive name distinctive. It will be 👉 Initially descriptive terms may become distinctive (registrable) if used to such an extent that it will be perceived as a trademark rather than a descriptive term. An example of this is LE TOUR DE FRANCE. It is initially descriptive, but because of its long and successful use it has acquired distinctiveness. An average person knows it is an annual commercial event, namely a cycling competition. From a marketing and brand building point of view this is expensive, uncertain and a long road. Establishing trademark rights through the use of the mark is not a good strategy for startups. It will fail almost without exception. 👉 If you have a descriptive brand name, it can be protected in a distinctive figurative form. You might never get exclusive rights to the name, so making a distinctive logo is vitally important. Maybe in time you will become the exception and manage to acquire rights for the name as well. Finally, you should remember that even if the mark is not descriptive, it does not automatically mean that it is distinctive. Descriptiveness is only one form of non-distinctiveness. Conclusion When choosing a name for a product or service, one of the most important things is to make sure that the name is not descriptive of the products or services in question. That goes a long way in ensuring that the name is eligible for legal protection. Building a brand for a name that cannot be legally protected is like building a factory that competitors can use to manufacture their own products. A strong brand starts with a non-descriptive distinctive name.

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