In 2016, a US company filed an EU trademark (EUTM) application for the word/device mark &PIZZA. The company sought protection for foods and drinks, as well as for restaurant, bar and catering services. The EU's Intellectual Property Office (EUIPO) partly refused the application due to lack of distinctive character as a result of the descriptive nature of the term 'pizza'. However, the applicant was able to overcome the restriction by filing a goods and services restriction, as Novagraaf's Frouke Hekker explains.

A brand name or logo must fulfil certain criteria in order to be registrable as a trademark (for full guidance, click here). In particular, it must have ‘distinctive’ character in order to enable the relevant public to distinguish the marked goods and services as belonging to a specific undertaking, as opposed to goods and services originating from other undertakings. If a mark does not fulfil these requirement a trademark application will be refused or, if a trademark right has been granted, the registration can be challenged and potentially revoked.

The requirement of distinctiveness is not met if the (dominant) word element for which protection is sought is descriptive for the goods and services in question. Therefore, when assessing distinctive character, the goods and services for which the mark has been applied must be considered.

&PIZZA not for pizza...

n this case, the sign &PIZZA was initially requested for various goods and services in classes 30, 32 and 43, including cheese sauce, tomato sauce, pasta sauce, pesto, pizza dough, and restaurant and bar services. In respect of these goods and services, the EUIPO examiner found that the sign &PIZZA was not suitable to serve as a trademark. It was considered that the word pizza is known to consumers throughout the EU as “a dish consisting of a baked disc of dough covered with cheese and tomatoes, usually with the addition of mushrooms, anchovies, sausage, or ham.” The examiner continued: “The term ‘&PIZZA’ immediately informs consumers without further reflection that the goods and services applied for are pizza itself, goods including sauces and dough intended to be used for pizza and restaurant, bar and catering services relating to serving of pizza.”

The figurative elements in the word/ device mark were also considered non-distinctive, as the ampersand is very common and a standard font is used.

..but it can cover soft drinks and sweets

In the application, the trademark was also requested for various goods that are not related to the food pizza, including: tea, coffee, salad dressing, confectionery, fruit juices, syrups, ice cream, bottled water, carbonated water and soft drinks.

The trademark application was not refused for these goods on the basis that the term pizza is not descriptive of them, and therefore complies with the requirements of distinctiveness. Following that judgement, the trademark applicant filed a restriction on goods and services, limiting the application to the non-objectionable goods.

Novagraaf's Nora Fowler comments: “When choosing a new trademark for your goods and/or services, it is always best to choose a sign (word or logo) which is as distinctive as possible (i.e. does not describe the goods or services or any of their characteristics in any way). Not only will this avoid these sort of problems at the application stage but customers will also learn to associate the sign with your goods/services exclusively and not assume that it is merely a description of those goods or services. This will make the trademark easier to protect against copying by others in the future as well.

"It is also possible to overcome objections by the Registry against non-distinctive trademarks based on 'acquired distinctiveness'. In order to do so, it will be necessary to submit a large amount of evidence to show that, due to the extensive use of the non-distinctive trademark on the market, this trademark has become, in the eyes of the relevant public, an indicator that the goods/service originate from one particular owner (the trademark applicant).

"If you do choose a trademark which is more descriptive, one option might be to include an additional distinctive element to the original trademark application. This will only offer relatively limited protection in relation to the less distinctive part of the trademark. However, it may be considered a kind of 'place holder' for the time it takes to build up the evidence needed to show that the non-distinctive part has acquired distinctiveness. Once the non-distinctive element has acquired distinctiveness on the market, it may be worth filing an application for that element alone.”