An attempt by a South Korean company to register a figurative trademark to protect the brand ‘Sweat Stopper’ has come unstuck after the EU Intellectual Property Office (EUIPO) refused the application on the basis it lacked distinctive character.
The application sought to protect the figurative mark (below, right) for use on goods in class 25: ‘Headbands against sweating; sweat-absorbent stockings; sweat-absorbent underclothing; sweat-absorbent socks and headbands [clothing]’. It was refused on the grounds it lacked distinctive character as a result of the descriptive nature of the words included in the trademark.
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 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.
‘Sweat Stopper’ fails the test
In this instance, the EUTM application to register the sign SWEAT STOPPER was refused by the examiner (in short) because of the descriptiveness of the terms and because the figurative elements in the sign were too minimal to endow the sign with any distinctiveness.
On appeal, EUIPO’s Board of Appeal (BoA) found in favour of the examiner’s ruling. In the proceedings, it explained that descriptive and non-distinctive signs are excluded from registration by trademark law in the public interest. It also noted that the relevant goods in this case are meant for a public at large and are aimed at the average consumer that does not have a high level of attention, noting: ‘sweat’ and ‘stopper’ are common words that will be perceived by the relevant public as “a meaningful expression signifying a thing that stops or puts an end to sweat/ perspiration”. It rejected the counter-argument that the sign was “an original linguistic formulation which is attractive and whimsical” as argued by the applicant. The figurative elements were not considered to be original as a very standard font is used.
In general, a combination of descriptive/ non-distinctive elements can sometimes be considered distinctive if the sign creates an overall impression that is sufficiently far removed from the descriptive/ non-distinctive elements. However, BoA found this not to be the case with the sign SWEAT STOPPER.
Can you overcome limitations in distinctive character?
If a sign is initially ruled unsuitable to be registered as a trademark, it could still be eligible for trademark protection at a later date if it can be shown that it has acquired distinctiveness through use. ‘Acquired distinctiveness’ can apply where the trademark has become widely recognised through long-term or intensive use; in other words, the sign has begun to function as a distinguishing sign, and thus as a trademark. That said, it is generally advisable to begin with a brand name or logo that is strong enough (and available) to be registered on first application.
Signs that have a limited distinctive character may be strengthened by combining them with a distinctive element (e.g. a composite mark including a word and figurative element). Although note that the resulting trademark right will then only cover the trademark in totality, rather than the elements individually.