Lack of distinctive character of a mark

It is defined distinctive the sign able to identify a product, a service or a company in order to differentiate it from the competitors to the eyes of the public.

Therefore, if the sign has not distinctive character, it will not be recognized by the competent authorities as a valid and effective mark and therefore it cannot be registered.

You can find here below some judgments in order to better understand the concept.

EUIPO says no to Charlot’s trademark registration

With decision of 3 January 2023 (appealable by March 3rd, 2023) relating to the European Union Trademark Application n. 018141170, the European Union Intellectual Property Office denied the possibility to register as a trademark the image of Charlot, as:

• Given exceptional reputation of the depicted person, the relevant consumer, namely the general public as well as businesses, professionals and specialists ….will recognize through this representation the famous comic character Charlot, interpreted in the movies by Charlie Chaplin (1889-1977) between 1913 and 1916;
• The comic and iconic character of Charlot, a famous wanderer, appreciated by the public of all over the world and whose fame echoes the celebrity of its creator Charlie Chaplin (1889-1977) embodies and conveys extremely positive modern, liberal and humanist values, in particular denouncing the alienation of man due to the machine (1936, Modern Times) and ridiculing the totalitarianism and Nazi ideology (1940, The Great Dictator).

The Office affirms the lack of distinctive character of such a trademark, because the public, although certainly considering in a positive way the image of Charlot, would not link his effigy to a specific company: thus, the primary function of a brand would be missing, namely the capacity to establish a link between the products (and/or services) and a specific company.
All that Charlot’s image is able to do it to help to make more attractive the products and services distinguished by his image, but it cannot identify their origin.

More specifically, the Office states in this regard:

The relevant public, which perceives the familiar and humorous image of the Charlot character in a favorable light with regard to modern, liberal and humanistic values which is associated to, will perceive the sign as an advertising representation of this character played by Charlie Chaplin (1889-1977), whose sole purpose is to incite or cause the purchase of the product or the subscription of the service. On the other hand, this sign will not be perceived by the relevant public as an indication of the commercial origin of said products and services.

Lack of distinctive character: the case “flagship”

The judgment of the General Court (T-131/13 of March 14 2014) provides an example of practical application of the rule set out in Article 7, paragraph 1, letter b) of the European Union Trademark Regulation (absolute grounds for refusal), according to which

“Shall not be registered trademark which are devoid of any distinctive character”.

In March 2011 an Italian company filed a Community trademark (now named European Union trademark) application which, according to the description that was given, consisted “in a stylized three-dimensional flower affixed to the collar of the garment” for the following goods in class 25: “jackets, coats, overcoats and raincoats”.

Both the Examiner and the Board of Appeal, when requested as a result of the refusal to register the mark, considered the mark in question cannot be registered because devoid of any distinctive character and stated that the same would be perceived by the relevant public as a mere ornament and decoration and not as a trademark, as

“representing an element commonly used to adorn the goods claimed”.

In their opinion, consumers would consider the flower affixed to the collar of the jacket only for decorative purposes.

The Court upheld the provisions of the Examiner and the Board of Appeals, noting that it is well known that a flower – be it true or cloth – can adorn a loop placed on the collar of a garment. The consumers, therefore, could not consider such a sign as a distinctive sign capable of distinguishing the goods of a producers form those of its competitors.

Lack of distinctive character: the case “buddha bar buddha café’”

The Supreme Court (Italian “Corte di Cassazione”, section I, January 25, 2016, judgment n.1277) confirmed the Milan Court of Appeal’s judgment which declared the invalidity of the BUDDHA BAR and BUDDHA CAFÉ’ trademarks for lack of distinctive character and contrariety to the public policy, as offensive of Buddhist religious sentiment.

Regarding the requirement of distinctiveness, the Court emphasized that it is essential that the meaning of the name and, more generally, the meaning of the words used in the mark is capable of identifying a product or service as originating from a specific undertaking and that, therefore, “a word mark can also be invalid when the names are not able to indicate the origin of a product, or when, although the names are able to indicate the product’s origin, they are not able to distinguish the same from similar products”.

The Court of Appeal had stated that the marks BUDDHA BAR and BUDDHA CAFÉ’ are devoid of distinctive character because the word BUDDHA

“evokes not only a religion, but communicates acceptance or at least interest in a philosophy and way of life associated to the most different forms of social interaction, from literature to music, from visual arts to the cooking, so that it became a trend”

and that

“the combination of the word Buddha and the words “bar” or “coffee” is not abnormal or unusual, being these places traditionally connectable in our cultural tradition even to manifestations of literature or art in general”.

For this reason, the combination of the word “Buddha” with descriptive terms like “BAR” or “COFFEE” (when they are used to distinguish these kind of services) cannot be a valid trademark, as devoid of distinctiveness.