Is your brand sufficiently distinctive?

During the summer months, pharmacy shelves are packed with sunscreens ranging from factor 6 to 50+. These products generally offer excellent protection against the sun but, when it comes to brand protection, it’s a different story: both the numbers and the term sunscreen do not fulfil requirements for distinctive character and, therefore, cannot be registered as trademarks. We set out the requirement of distinctiveness in trademark registration.

A trademark can be any word, sign, symbol or graphic that you apply to your company, goods or services to distinguish them from those of your competitors; for example, a brand, product or company name, or logo. The trademark serves as a badge of origin for your business and its brands and products, and can consist of words, logos, images, slogans, shapes and colours, or a combination of all of these.

Not every word, sign, symbol or graphic is capable of being registered as a trademark, however. It must fulfil a number of conditions in order to be passed for registration, including that of ‘distinctiveness’. But what does ‘distinctive’ mean in this sense?

Assessing distinctiveness There are a number of elements that determine whether or not a trademark fulfils the distinctiveness requirement to become a registrable trademark. The central and most important factor is whether or not the trademark is descriptive.

You need to look at the proposed trademark in relation to the goods or services for which it is being used. Is the name (or drawing, print, shape, etc) descriptive in relation to those goods or services? If so, the applicant will not, in principle, be able to obtain trademark rights for that name.

To be approved by the relevant trademark office, the proposed trademark needs to be a word, logo, picture or other sign that clearly identifies the applicant’s goods and services from those of other traders.

Therefore, the numbers that refer to the degree of sun protection (e.g. factor 50+) would not meet the requirements for distinctiveness, and so are not capable of trademark registration.

Is it a common term? If you drive past the petrol station while on holiday, you may notice you can buy ‘diesel’ there. Diesel is a descriptive indication of a particular type of fuel and, so is not registrable as a trademark. In comparison, the word is not a common term in the clothing or fashion sector, which makes it a distinctive brand for such products (hence the Diesel fashion brand).

There are countless examples of brands that use a common term, but in different sectors to those where they are commonly used. Another well-known example is Apple.

Is the term generic? Once arrived at your holiday destination, you’ll probably fancy a cold drink. You might consider having a cocktail, such as a piña colada. Cocktail names such as these have become generic terms since they have been used to denote the nature of the cocktail rather than the origin of the cocktail. As such, it is not possible (anymore) to protect them as trademarks.

Have you created a neologism? You could opt to combine two words to form a brand name. The fact that the resulting word can’t be found in a dictionary, however, is no guarantee that it can be registered as a trademark.

The Court of Justice of the European Union (CJEU) has ruled that a combination of descriptive words is in itself descriptive, unless there is a perceptible difference between the neologism and the mere sum of the elements of which it is composed. ‘Baby-dry‘ for nappies was considered acceptable, although many subesequent decisions have tried to distinguish themselves from the acceptance of that mark, whereas ‘doublemint‘ for chewing gum is not.

Does the mark include a graphic element? Previously, the requirement for distinctiveness could easily be satisfied by adding a graphic element to the descriptive name. In other words, instead of registering a word mark, you would register a device mark. In recent years, however, the addition of a graphic element no longer guarantees that your application will overcome a lack of distinctiveness. The addition must add something “extra” to the mark so that it is no longer just the descriptive term. For example, a picture of a KIWI fruit added to the word KIWI will not make the mark distinctive for fruit but makes it even more descriptive, but adding a non-related device such as complex geometric shape might. It will never enable you to stop others selling kiwi fruit and calling them kiwi fruits, however.

Is the brand in extensive use? Finally, if it can be shown that the mark has become established in a market due to long-term and/or extensive use, you may be able to obtain trademark registration despite a lack of distinctiveness in your chosen brand name. However, in order to do this, you must prove that the sign has been used so extensively that your consumers perceive it as an indication of the origin of the goods and not as a description of the mark. This can be done by demonstrating the market share of the brand, and the intensity, geographical spread and duration of the use of the mark. Audi obtained registration of the descriptive German phrase ‘VORSPRUNG DURCH TECHNIK’ (advancement through technology) on that basis.

Find out more The assessment of a mark’s distinctiveness can often be subjective. However, it is possible to assess the feasibility of registration for a chosen brand name by reviewing it for descriptive and distinctive elements. It is also important to check that the mark is available for use prior to any brand launch.

To find out more about trademark registration or trademark availability searching, please speak to your trademark consultant or contact us.