Descriptive trademarks
Foreign-language trademarks
Trademarks comprising descriptive terms in foreign languages
Comment


Descriptive trademarks

"Descriptive trademarks" refers to signs that are exclusively made up of terms which directly inform the consumer about one or more of the essential characteristics of the goods or services they distinguish. Article 135e of Decision 486 prohibits the registration of this type of sign because such terms are necessary to identify and market the products or services they distinguish. An exclusive right cannot be granted over them as this would affect the interests and rights of other competitors. Consequently, they must remain in the public domain.

The Andean Court has established that:

one of the methods for determining whether a sign is descriptive is to ask the question 'what' is the product to be registered, so that if the answer spontaneously provided - for example, by an average consumer - is the same as that of the designation of that product, the descriptive nature of the denomination will be established.(1)

Foreign-language trademarks

In relation to trademarks made up of words in foreign languages, the Andean Court has established that where a word's translation is not common knowledge, it is considered to be a "fantasy sign". Consequently, the registration of such a word as a trademark is appropriate.(2) The Court has established that the translation of a word in a foreign language should be considered to be common knowledge when, among other things, it:

  • is commonly used in relation to the goods or services that it is intended to identify; and
  • shares a common root or phonetic similarity with its translation in Spanish.

Trademarks comprising descriptive terms in foreign languages

What rules apply to signs comprising words in a foreign language that are also descriptive? This was the question to be resolved in a case relating to the application for registration of the trademark SMALLRIG to identify products in class 9 of the International Classification.

At first instance, the Directorate of Distinctive Signs of the National Institute for the Defence of Competition and Protection of Intellectual Property refused ex officio the registration of the sign,(3) holding that it was subject to the prohibition of registration established in article 135e of Decision 486:

In effect, the sign applied for registration is made up of the term SmallRig, which in its translation into Spanish means SMALL EQUIPMENT, which refers to the accessories that are used with the products that are intended to be distinguished with the sign applied for, in turn, the referred term is known in the market as that accessory that is used as a support for cameras.

The trademark applicant lodged an appeal. He pointed out, among other things, the following arguments:

  • The term "rig" was not a root word and bore no similarity to the word in its Spanish translation, which would be "equipo".
  • After a search for the term "rig" on the webpages of various shops specialising in the sale of goods in class 9, no results were found.

The appeal was declared to be well founded.(4) It was held that the translation of the term in English would likely not be understood by the consumer, because it had neither a common root nor a phonetic similarity to its translation into Spanish. It was also not a term that was frequently used in the Peruvian market. Therefore, it should be perceived as a fanciful sign.

Comment

At first instance, Indecopi analysed the sign in question by applying the rule relating to descriptive signs. Its decision was later corrected by the second instance, which applied the rule relating to signs involving a foreign language term, a method that was much more appropriate.

Although the translation into Spanish of a word in a foreign language may be descriptive, if its translation is not common knowledge, it would not inform the consumer about the characteristics of the product or service, and nor would it be used spontaneously by the consumer to designate such product or service. Therefore, it should be considered to be a fanciful name that is subject to an exclusive right.

For further information on this topic please contact Kelly Sánchez at OMC Abogados & Consultores by telephone (+51 502 6467 or +51 635 0641) or email ([email protected]). The OMC Abogados & Consultores website can be accessed at omcabogados.com.pe.

Endnotes

(1) Interpretaciones Prejudiciales 27-IP-2001 and 336-IP-2015.

(2) Interpretación Prejudicial 73-IP-2021.

(3) Resolution No. 0062-2020/DSD-INDECOPI.

(4) Resolution No. 2046-2020/CSD-INDECOPI.