A mark, to be valid, must be distinctiveIt must be capable of differentiating the products of one undertaking from those of a competing undertaking.
And in order to distinguish one's products from those of others, one must avoid at all costs falling into the trap of the descriptivityand focus on a brand arbitrary.
Descriptiveness, what is it?
Descriptiveness is when a word or expression is used as a trademark, even though that word or expression has a direct or indirect link with the product or service being offered.
- Direct linkthe trademark designates the product or service as such.
For example: KNIFE to designate knives, or knife sharpening services. Here, the term "knife" is directly descriptive of the product in question or the object of the service rendered.
- Indirect link the brand refers to a essential aspect of the product or service.
For example: TRANCHANT for knives, or LUXURY for travel. In the first case, we understand that the knives offered are sharp, which does not allow to differentiate them from those of the competition, which are also supposed to be sharp. In the second case, one imagines that the trips offered are luxury trips, which is not only reserved for the company that wants to use LUXE as a brand.
Terms that are considered descriptive are terms that must remain available to all operators in the same market. It would indeed be inappropriate to grant an operating monopoly on a word to a single operator, even though that word is commonly used by all of them in their communication.
On the other hand, the term KNIFE or SLOPE used as a clothing brand will not cause any problems, since even if they are common language terms, they have no connection with the product in question.
Consequence of descriptiveness: the trademark will be refused registration.
The case of the slogan
The slogan is in some cases considered descriptive because it promotes the merits of a product or service and can thus be perceived by the consumer as a mere advertising message, and not as a brand capable of distinguishing its products from those of competitors (this is always mentioned). So be careful with slogans. A good analysis of slogans is essential before filing a trademark application.
Is it possible to circumvent the refusal of registration in the case of a descriptive mark?
Yes, this is possible, by adding a truly distinctive element to your brand. For example, a logo that is sufficiently present within the brand to attract all the distinctiveness to it. Indeed, logos are also subject to an obligation of distinctiveness. If you are an apple producer and your logo represents an apple, there is a good chance that it will be refused registration because it directly refers to the product sold. On the other hand, some logos are considered too simple to bring distinctiveness to a trademark. For example, a simple star in place of a dot on an "i" may not be enough to make your trademark sufficiently distinctive.
And beware: your logo may allow you to obtain trademark registration, but the trademark will only benefit from a limited protection. Indeed, the descriptive word within your brand will not be protected, it is at most the logo that will be protected. Therefore, if you change your logo during the life of your company, then your brand will lose all its interest.
In general, it is preferable toavoid the filing of a descriptive markeven if it contains a logo.
What is an arbitrary mark?
It's a brand that has no connection with the product or service you're offering under that name. It can be an invented term, a family name, an anagram (the letters of the word have been put in disorder to create a neologism), an acronym (the first letter of each word of an expression)...
The arbitrary mark is potentially the one that has most powerfulbecause the name as such is protected in such a way that you can object to trademark registrations or uses. identical or only close of your registration. Whereas the descriptive or partly descriptive mark has a protection often reduced to its identical reproduction.
Examples of arbitrary marks: Nike, Apple, Canon, Fanta, Toshiba, Haribo...
Warning: even in the case of an arbitrary mark, you are not exempt from making background checksbecause someone may have thought of it before you or filed a similar mark. We invite you to consult our offers for more information.
Acquisition and loss of distinctiveness
Distinctiveness can be appreciated on the date of filing of the brand. A very old trademark may not seem very distinctive today but may remain registered because it was distinctive on the day it was filed. But these marks can slowly slide into degeneration and lose their distinctiveness. Cf. on this subject our degeneration sheet.
Distinctiveness can also be acquired even though the term or expression constituting the mark is basically completely descriptive. This is the case when a descriptive mark is globally recognized by consumers as referring to the products or services of a well-identified company.
The best and most recent example of the acquisition of distinctiveness through use concerns the "vente-privee.com" trademark. This is a descriptive expression since it is used in connection with promotional sales services for all types of goods or services. The ".com" does not provide any additional distinctiveness. However, the Paris Court of Appeal decided at the end of 2014 that the vente-privee.com trademark has acquired a distinctive character due to continuous, intensive and broad use by a public that, to a significant extent, links this trademark to the company that uses it, and does not confuse it with its competitors.