In recent years, the intellectual property office of the EU (EUIPO), and those of many EU countries, havetaken an increasingly strict approach to the examination of figurative trademarks, with a high number being refused for lack of distinctiveness. A recent example of this stricter practice is the refusal of the EU trademark (EUTM) application for the word-/device mark ‘Tasty Puff’. The decision provides some helpful guidance to brand owners seeking to register figurative marks.

Fulfilling trademark registration criteria

One of the main requirements for trademark protection is that the sign should be ‘distinctive’. In other words, it must enable the relevant public to distinguish the trademarked goods as belonging to that specific brand or business, as opposed to those originating from other undertakings. A sign is not considered distinctive when it is merely descriptive of the product or services, i.e. as related to quantity, quality, characteristics, purpose, kind or size of the goods or services. This is to stop businesses from obtaining a monopoly on purely descriptive terms.

It is on these grounds that an application to register the ‘Tasty Puff’ logo as an EUTM under class 34 (tobacco/smokers’ articles), shown below, was refused (Gerecht EU 28 januari 2017 – Tasty Puff (T-64/16)). The examiners found the mark to be descriptive and therefore non-distinctive, and did not agree that the choice of typeface and added illustrative dots was sufficient to differentiate the sign from a simple word mark. Indeed, the rounded typeface and dots could simply be associated with puffs of smoke. The IPO also found that the words ‘Tasty Puff’ were likely be interpreted as ‘delicious smoking’, a directly descriptive expression for a good tobacco taste.

Identifying the threshold for figurative trademarks

Descriptive or non-distinctive word marks may be accepted as trademarks if they are combined with other elements that make the sign as a whole distinctive (i.e. a composite of a word element and a figurative element, such as a logo).

In this way, the requirement for distinctiveness could easily be satisfied by adding a graphic element to the descriptive name. In recent years, however, the addition of a graphic element no longer guarantees that your application will overcome a lack of distinctiveness. The addition must add something “extra” to the mark so that it is no longer just the descriptive term. For example, a picture of a kiwi fruit added to the word ‘Kiwi’ will not make the mark distinctive for fruit but makes it even more descriptive, but adding a non-related device such as complex geometric shape might.

In October 2015, The European Trade Mark and Design Network published ‘Convergence Programme 3’, a framework adopted by EUIPO and several national trademark offices in the EU, that agrees a common practice in relation to the registration of figurative trademarks combining descriptive/non-distinctive word (elements). The aim of programme is to increase legal certainty, transparency and predictability among EU Member States. It specifically sets out several figurative and word elements that, added to descriptive/non-distinctive signs alone, do not meet the threshold of distinctiveness:

  • Standard or basic typeface;
  • The mere addition of a single colour;
  • Adding punctuation marks or other symbols that are commonly used in trade;
  • The fact that the elements are arranged in vertical, upside down;
  • The use of simple geometric shapes such as points, lines and circles;
  • Whether the figurative element has a direct link with the goods and/or services;
  • Figurative elements commonly used in trade for the goods and/or services applied for.

However, a combination of certain elements can, when considered as a whole, be perceived as a badge of origin (thereby fulfilling some of the criteria for trademark registration). This requires the combination to result in an overall impression that is sufficiently far removed from the descriptive or non-distinctive message of the word element.

Is the brand in extensive use?

Finally, if it can be shown that the mark has become established in a market due to long-term and/or extensive use, you may be able to obtain trademark registration despite a lack of distinctiveness in your chosen brand name. However, in order to do this, you must prove that the sign has been used so extensively that your consumers perceive it as an indication of the origin of the goods and not as a description of the mark. This can be done by demonstrating the market share of the brand, and the intensity, geographical spread and duration of the use of the mark. Audi obtained registration of the descriptive German phrase 'VORSPRUNG DURCH TECHNIK' (advancement through technology) on that basis.

Find out more

The assessment of a mark’s distinctiveness can often be subjective. However, it is possible to assess the feasibility of registration for a chosen brand name by reviewing it for descriptive and distinctive elements. It is also important to check that the mark is available for use prior to any brand launch.