When is a trade mark considered distinctive

Out-Law Guide | 30 Mar 2005 | 2:24 pm | 5 min. read

Time and money can be lost by attempting to register marks which lack 'distinctive character' and one must be skilled in pushing the right buttons at the relevant Trade Mark Office to gain the prize that is a trade mark registration.

This guide is based on UK law. It was last updated in July 2011.

Within the European Union, Trade Mark law is regulated by a Trade Marks Directive which has become law in each member state and a Community Trade Mark Regulation.

Under Article 3 of the Directive, trade marks that lack distinctive character or serve in the trade to designate the characteristics of the goods or services for which registration is sought cannot be registered. Under Article 7 of the Regulation, marks which consist exclusively of signs or indications which designate the type or other characteristics of the goods cannot be registered.

The approach of the European Courts on the distinctiveness of trade marks has fluctuated over time. EU case law has laid down guidelines for distinctiveness which require consideration of the goods and services in respect of which registration is sought, as well as the understanding which the relevant public has of the trade mark.

Previous guidance

In the BABY-DRY case of 2001, the European Court of Justice (ECJ) said that for word combinations, the test is whether the combination in question is the normal way of referring to the goods or services or of representing their essential characteristics in "common parlance". Because of the "syntactically unusual juxtaposition" of the words 'baby' and 'dry', BABY-DRY was not a familiar expression in the English language for describing nappies or their essential characteristics. The combination was a "lexical invention bestowing distinctive power on the mark so formed", so BABY-DRY was not registrable.

However, in the DOUBLEMINT case of 2003, the ECJ found that DOUBLEMINT was purely descriptive of chewing gum, stating that just because 'double' and 'mint' in combination gave rise to a variety of possible meanings, this did not automatically mean that the words were not descriptive.

The Advocate-General had suggested that a proposed trade mark should be assessed as follows:

  • What is the relationship between the mark and the product? If the mark to be used is a general description in the particular trade then registration will be refused.
  • How immediately is the message conveyed? If the mark quickly conveys the characteristic of the goods/services it will not be registrable.
  • What is the significance of the characteristics in relation to the product in the consumer's mind? If the characteristics are intrinsic to the product or the consumer's choice of product, then the grounds for refusing registration because of the descriptive element are high.

When this approach was applied to DOUBLEMINT, there was held to be a tangible reference to mint flavour which is doubled in some way and therefore "readily perceived" as such, and the flavour was a prominent feature of the product. Registration was therefore denied.

This approach was confirmed in the 2004 case of POSTKANTOOR, where the ECJ stated that if, due to the unusual nature of the combination of words which form a trade mark, the overall impression is sufficiently far removed from the descriptive elements of the words concerned and the combination creates a different impression from the individual words, the mark is registrable. If the new word has established its own meaning, independent of the individual components which make up the mark, then again it is registrable.

More recent guidance

EUROHYPO

In this 2008 case, the ECJ clarified that distinctiveness and descriptiveness are separate considerations requiring separate assessment in terms of whether a Community Trade Mark (CTM) should be registered.

The Office for the Harmonization of the Internal Market (OHIM) Board found that the words "euro" and "hypo", which were an abbreviation of "hypothek" meaning "mortgage" in German, were descriptive of those services, and the association of those two elements in one word did not make the word any less descriptive.

On appeal, the Court of First Instance (CFI) then ruled that it was sufficient that the OHIM Board of Appeal had applied the descriptiveness test in relation to the word mark EUROHYPO, confirming that a mark which was descriptive of the relevant goods and services was devoid of any distinctive character under Article 7 of the Regulation.

The ECJ ruled that although there was some overlap between the 'distinctiveness' and 'descriptiveness' grounds for refusal to register a trade mark, each ground was independent and required separate examination.

However, the ECJ also concluded that the EUROHYPO mark lacked distinctive character as the relevant public (in this case, the average German-speaking, reasonably well-informed and observant consumer) understood the sign EUROHYPO as referring to financial services (particularly to mortgage loans paid in euros).

The ECJ agreed with the CFI in that the components "EURO" and "HYPO" were descriptive and the overall concept of "EUROHYPO" did not give an overall impression that went beyond the sum of its parts. There was no additional unusual element to distinguish the applicant's service from those of a different commercial origin.

HOMEZONE

In this 2010 case, the EU General Court annulled the OHIM Board of Appeal's decision to reject the application to register HOMEZONE as a CTM for telecoms goods and services.

The Board had rejected the application on the grounds that the mark was descriptive and lacked distinctive character.

The EU General Court found that the Board was correct in finding that the meaning of "homezone" (in English and German) was the geographical notion of "home area" or "local area". However, the Court also found that the Board had failed to explain that, as the word "homezone" was used descriptively by some mobile-network service providers, the trade mark HOMEZONE necessarily involved a reference to a tariff, and was therefore descriptive of a telecommunications service.

The Board had failed to identify a link between the HOMEZONE mark and a geographical area, or to establish the necessary link between the mark and telecommunications goods. Therefore, the Board's decision did not contain any specific examination of the grounds for refusal under Article 7 of the Regulation, and the meaning of the mark was ambiguous.

This case was unusual in that the word combination seemed to be little more than the sum of its parts, but the word mark was still held registrable as a CTM.

INSULATE FOR LIFE

This case was decided in February 2011. The word mark INSULATE FOR LIFE was applied for as a CTM for "building construction; repair; installation services".

The OHIM Board of Appeal decided that this word mark lacked distinctive character under Article 7(1)(b) of the Regulation, and this decision was upheld by the EU General Court.

The Court held that "insulate" had no meaning other than to insulate, and "for life" would be understood by the relevant public (here, the English-speaking part of the European public) as meaning "lasts for a lifetime" or "for a lifetime period".

The Court therefore found that the relevant public would understand the word sign INSULATE FOR LIFE as "a reference to very long-lasting services related to the use of a particularly durable insulation material, and not as an indication of the commercial origin of those services".

Therefore, the sign did not have an unusual or ambiguous character which would lead the relevant public to make an association other than with the services being provided.

Summary

These cases suggest that if the relevant public associates your mark purely with the relevant services provided rather than linking the mark with something unusual or particular to your services, the mark will not be registrable. In cases involving word combinations, the mark must mean more than the sum of its parts.