Trademark applications frequently fail due to lack of distinctiveness. However, it is possible to overcome this barrier to registration for marks combining descriptive and/or non-distinctive elements, if the sign as a whole creates an overall distinctive impression, as Novagraaf’s Frouke Hekker explains.
The EUTM application for ‘SWEAT STOPPER’ provides just one recent example of a mark that has fallen short of the distinctiveness requirement. In its ruling on this case, EUIPO’s Board of Appeal explained how, according to standard case law, a combination of descriptive / non-distinctive elements could still fulfill the requirement of distinctiveness, if the sign as a whole creates a distinctive overall impression. An example of this can be seen in the recent decision on the EUTM application for the word/device mark ‘ECOSILVER’.
The distinctiveness requirement
As we have written previously, a brand name or logo must fulfil certain criteria in order to be registrable as a trademark (see guidance 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 requirements 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 deemed not to be met if the (dominant) word and/ or figurative element for which protection is sought is descriptive of the goods and services in question. In other words, when assessing distinctive character, it is important to consider the goods and services covered by the application. These are listed on the basis of the 'Nice Classification', which covers 45 classes of goods and services (34 for goods and 11 for services), and should be as clear and precise as possible to determine the scope of protection of the requested trademark.
The ECOSILVER example
In September, EUIPO’s Board of Appeal issued its decision on the EUTM application for the word/device mark ECOSILVER (pictured below).
A German undertaking had applied for the trademark on 30 June 2016, but it was refused by the EUIPO examiner on the grounds that it was not distinctive for the metal-related goods and services for which protection was sought. The examiner considered that the word elements ECO and SILVER were, for the relevant public, descriptive words for the goods and services requested: silver, a metal, and eco short for ecological. They also ruled that the ‘minimal figurative elements’ were not sufficient to make the mark adequately distinctive.
On appeal, EUIPO’s Board of Appeal overruled the decision however, finding that the examiner had failed to consider how silver in itself could be ecological. The Board also considered that the figurative element placed before the word elements “is neither totally insignificant in terms of position or size, nor is it commonplace (…) nor is it a true-to-life depiction of a human being. Also, the figurative element does not underline the semantic meaning of either of the words elements, as it neither signifies ecology, nor does it display silver as a metal or colour or an object usually made of silver.” In conclusion, the Board ruled that the word/device mark applied for is, in its entirety, sufficiently distinctive to serve as a trademark.
As we have written previously, the requirement for ‘distinctiveness’ can often appear subjective as it is dependent on a national trademark office’s policy.