In the context of the European Union trademark it is important to evaluate how much can affect the descriptiveness of a term in a weak trademark when the term is descriptive only for a part of the public of the market of the European Union. You find here below the case of the trademark Bellissima.
Article 7, paragraph 1, letter b) of the European Union Trademark Regulation provides that:
“shall not be registered trademarks devoid of any distinctive character”,
and states, in paragraph 2, that the prohibition
“shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community”.
We remind you that it is not possible to consider devoid of any distinctive character not only the brands that directly coincide with a word describing the product or its quality (for instance, “jeans” for denim trousers, “anti-rain” for a raincoat or “moisturizer” for a face cream), but also the words which are a pure laudatory message identifying the product.
An interesting implementation of such article is to be found in the decision of the Board of Appeal of EUIPO number 15582012-2 dated 28 May 2013.
In this matter, the Boards of Appeal upheld the decision of the Examiner who rejected trademark application “Bellissima” as descriptive.
The application was filed to distinguish a range of products for personal care, including, for example, “manicure and pedicure set, electrical apparatus and instruments for gathering, cutting, crimping, straightening, hair styling” in class 8; “electrical apparatus for ultrasonic cleaning and facial wrinkle reduction and electrical equipment for microdermabrasion and electrical stimulation for body toning” in class 10; “electrical apparatus for drying nail polish or decorate nails” in class 11; “mirrors” in class 20 and “brushes and sponges for cleaning body” in class 21.
OHIM (now EUIPO) had considered trademark “Bellissima” application devoid of distinctive character as Italian speaking consumers would receive the word
“as a simple laudatory message, whose purpose is to point out that the products in question are able to make very beautiful the users, her skin etc. as for the figurative elements of the application, they are so minimal and not sufficient to provide a distinctive character to the mark”.
It is likely the application would not have been rejected if it had been characterized by a strong graphic stylization, but the OHIM (now EUIPO) considered that for “Bellissima”
“neither stylization nor horizontal extension of the word are able to characterize the mark as a whole”.
In assessing the descriptiveness of the mark in question the Boards of Appeals had the opportunity to state that
“are not distinctive not only the signs which describe the type of products/services distinguished by them … but also the signs not able to identify commercial origin of the products/services designated and that, as a consequence, are not able to perform the essential function of the mark”. In this way Bellissima would consist in an ordinary advertising message, “that does not require efforts of interpretation”.