Distinctiveness v Descriptiveness in Trademark Law

Deciding on a business trademark can be a minefield for the uninitiated. Simply running a quick Internet search to see if your prospective mark has been used by any other organization will not be enough to protect you from a filing objection.

And, in order to circumnavigate a rejection by a Trademark Office on absolute grounds of refusal at the outset of a trademark application process, it is essential to run knockout searches and clearance searches to ensure, among other factors, your trademark is distinctive and not merely descriptive.

What is a descriptive mark?

A descriptive mark simply describes the nature or a particular characteristic of a product or service. For example, an orange seller cannot trademark the term ‘orange’ as it is a generic word, or ‘juicy’ as it is merely a descriptive term for an orange. However, ‘Apple’ was able to be trademarked in terms of computers, as an apple is not generic to computers.

In EC Brand Comércio, Importação e Exportação de Vestuário em Geral Ltda (“EC Brand”) v EUIPO, the General Court upheld the BoA’s decision that the proposed mark PANTYS for sanitary towels and women’s underwear should not be registered because it was devoid of distinctive character and was descriptive under article 7(1)(b) and 7(1)(c) of Regulation 2017/1001.

EC Brand claimed that the term ‘pantys’ does not appear in English dictionaries and is not used in everyday language as a descriptive indication of all the goods and services at issue. The GC dismissed these arguments since the word ‘pantys’ does not differ from everyday language in such a way that the relevant public would view it as more than a mere misspelling of the English word ‘panties’. Furthermore, ‘pantys’ is phonetically identical to the correct spelling of the word.

However, descriptive marks have been upheld by the courts on occasion. In Sky Enterprise Private Ltd. v Abaad Masala and Co. an Indian court held that the defendant could not use the words ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ in this particular sequence, thereby upholding the protection of the plaintiff’s registered trademark of these combinations of words. The court stated that each individual word forming part of the registered trademarks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ could be a descriptive word for masala powder.

However, the court ruled that no one else could use this particular combination and order of the words to describe a product or service, as the specific combination and order is not used in the food trade for portraying the character or quality of goods.

Acquired distinctiveness

A descriptive mark can become registered if it has gained secondary meaning or acquired distinctiveness. Acquired distinctiveness occurs when a previously descriptive mark has achieved distinctiveness over a period of time.

However, in the EU at least, registering a trademark with acquired distinctiveness is not without challenges. Lukasz Zelechowski argues in How unitary is the EU trade mark? Territorial aspects of acquired distinctiveness¹ that the geographical scope of acquired distinctiveness within the EU causes problems for lawyers and scholars alike.

The author argues:

“…. the principle of the unitary character of EUTMs should lead to adopting a more unitary approach towards the assessment of acquired distinctiveness, instead of the country-by-country approach dominant in case law. More specifically, whenever no territorially varying consumer perceptions are involved in establishing a lack of inherent distinctiveness of a EUTM, the territory of the EU should be treated, for the sake of establishing acquired distinctiveness, as a monolith undivided by borders between the Member States. This is normally the case with non-word marks, such as shapes or color marks, which are perceived in a uniform manner throughout the EU as either possessing or lacking inherent distinctiveness.”

How to ensure your proposed mark is distinctive

To avoid wasting time and money on having a trademark application rejected for its lack of distinctiveness, it is vital to conduct robust knockout and clearance searches. Unlike marks that have acquired distinctiveness, inherently distinctive marks are registrable without proof that what was merely descriptive has gained distinction.

Apart from generic and descriptive trademarks there are also the following categories:

• Suggestive — the consumer must use their imagination to create a connection to the brand’s product or service. For example, ‘Puma’ suggests speed, but the word is not connected to sportswear.
• Fanciful — the brand has made up a new word, for example, ‘Kodak’.
• Arbitrary — the proposed trademark word does appear in the dictionary, but the brand is using it in a way that does not connect with its ordinary meaning, for example ‘Apple’ for computers and ‘Shell’ for oil products.

Final Thoughts

The best way to think of applying for trademark protection is to imagine a line marked one to ten, with one being unregistrable generic marks and ten being inherently distinctive marks which qualify for protection.

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DISCLAIMERS:

*This is an informational opinion article of the author. The views and opinions expressed in this article are those of the author and do not necessarily represent official policy or positions of Corsearch or its clients.

*The above trademarks and logos are not affiliated with or owned by Corsearch, and are used for illustrative purposes only as public record from the respective Trademark Offices.

*The above-mentioned brands are noted for factual reporting purposes only, the listing of the brands does not imply any relationship with Corsearch or its related entities.