Among trademark applicants, the same question comes up regularly: "Why is Apple a good trademark, since you explained to us that you can't register a generic term? ». It's time to answer it in a dedicated post.
The basic rule is that a generic term cannot be registered as a trademark because it must remain available to all players in the same market. Yes, but the term in question must be generic in its sector of activity. This is called a descriptive mark, i.e. the mark describes either the product or service as such or one of its characteristics.
Now let's take the example of Apple: even for the average Frenchman who learned English on the school bench, the term is transparent. It is indeed an apple. The term "Apple" or "Pomme" is of course completely generic, and therefore descriptive, for an activity selling apples (description of the product), or to designate a food product other than an apple (fruit juice, cookies, candy, etc.) because we can then think that this product contains apples (description of a product characteristic). On the other hand, using the term "Apple" or "Pomme" for computers, for a children's magazine (Pomme d'Api for example) or for selling clothing (Pomme Passion or 3 Pommes), does not pose any problem in terms of the validity of the mark in terms of distinctiveness. As a reminder, the distinctiveness of a mark is the opposite of descriptiveness: a distinctive mark is an arbitrary mark in relation to the product or service sold, that is to say, it has no connection with the product or service in question.
Note in passing that the rule is the same for logos: if you attempt to register only the image of an apple to designate fruit juices, your trademark will be refused registration since the image describes a characteristic of your products, namely that they contain (or may contain) apple. Obviously, if you associate a distinctive name with such a logo, your trademark will be accepted, but the scope of protection will be limited to the name.
Thus, we constantly come across trademarks that are composed of one or more terms in everyday language, but which are perfectly distinctive in their sector of activity. Here are a few examples:
|Sale of furniture|
|Leather goods, watches, jewellery|
As they are arbitrary, all these brands are very strong legally, easy to defend and highly valuable. You can't wish anything better for a brand!