The importance of distinctive character in EU trademarks

The European Union trademark, like all the other trademarks, can be composed of words belonging to any language, with or without a meaning.

We suggest to pay attention to the choice of the words composing your brand and to avoid non distinctive words, even if they are not distinctive only in one of the languages spoken in the E.U. Furthermore, we suggest to exclude words which are descriptive of the products/services distinguished by the mark.

Article 7, 1 b) of the European Union Trademark Regulation n. 2017/1001 provides that:

“The following shall not be registered: trademarks which are devoid of distinctive character” and specifies, to the paragraph 2 of the same article, that “paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Union”.

It is important to clarify that the European Union trademark application which is considered not registrable because consisting of descriptive words even for a part of the Union (for example, only for Italian consumers) is rejected for the whole European Union and not only for the territory where the descriptiveness is perceived.

Here below are some examples of brands which have been considered descriptive of the quality of the product identified by them.

OHIM (now EUIPO), with decision confirmed by the second Board of Appeal (R180/2012-2, decision 25.4.2012) rejected EU trademark application WASH&USE filed to distinguish in class 7 “washing machines, washing machines with drying functions incorporated; combined washing machines and dryer”. The Office considered this mark devoid of distinctive character for the English-speaking consumers of the Union, who, understanding the literal meaning of “WASH AND USE”, would perceive this expression as directed to inform them of the possibility of washing and then immediately using the product.

The Fourth Section of the EU General Court (case T-625/11, judgment 15 January 2013) confirmed the decision of the Community Office to reject trademark application ECODOOR for some products, among which “electrical machinery and appliances for the home and the kitchen, machinery and apparatus for preparing drinks and/or food, pumps for serving cold drinks for combined use with apparatus for cooling drinks…” (class 7), “vending machines, vending machined of beverages or foodstuffs” (class 9), “ apparatus for heating, steam generating and cooking…freezers…drying machines for clothing” (class 11).

The Community Office considered that the English-speaking public would split the meaning of the brand into two components, “DOOR” and “ECO” (intended as “ecological”) and would interpret the brand as “door whose construction and whose working are ecological”. Consequently, since some products claimed by the “ECODOOR” may contain doors, the Community Office deemed that this mark provides information on the ecological character of the same and, for this reason, it is descriptive and non-registrable.

The Seventh Section of the EU General Court (case T-104/11, judgment 1 February 2013) confirmed the decision of the Community Office to reject the community fraction of the international trademark PERLÉ for the products “wines, spirits, liqueurs, sparkling wines, alcoholic extracts” in class 33. The mark was considered descriptive because, both in French and in English, the term “PERLÉ” identifies a “slightly sparkling wine”.

In all the afore mentioned cases the trademarks were rejected because they were considered purely descriptive of the distinguished products or of a characteristic of such products. It is not relevant that non-English or non-French speaking citizens of the European Union do not perceive any meaning in the mark: for the non-registrability it is sufficient that the mark is descriptive even for a part of the Union (in the above mentioned case the marks were descriptive for French and English speaking, but the same rule is valid in all the Union, therefore also for Italian, Spanish, Polish, Greek and so on for all the languages of the Union)