The Polish Patent Office, the European Union Intellectual Property Office (EUIPO) and the EU Court are tightening the requirements for trademark registration.
Upon reviewing the most recent decisions of various European bodies, one may observe the practice of tightening the criteria of assessing trademark registrability. The examination of registrability of marks is conducted by the relevant patent offices after receiving an application for registration. Within this examination it is checked whether the applied mark fulfills the prerequisites for obtaining registration.
What absolute requirements must be fulfilled by a trademark
According to the relevant law, protection shall not be granted to signs which are not eligible for distinguishing the goods and services, for the marking of which they are destined, in particular the signs which are descriptive in relation to those goods and services.
Descriptiveness means that a trademark destined for designating the goods and services directly indicates the character of these goods or services.
For example, it is not possible to obtain registration for a designation "delicious fruit" for services consisting in the sale of fruit, as it directly indicates the quality of goods to be sold. A frequent practice of applicants whose trademarks have weak distinctiveness, for example due to their descriptive character, is an addition of a fanciful graphic setup. However, descriptive designations, even despite addition of graphic elements, may still be perceived as informative about the nature or the properties of goods and services designated therewith.
What trademark applications have been rejected by the European bodies?
EUTM no. 014450019
An application for the above mentioned European Union trademark "Dating Bracelet" was filed in classes 9, 41, 42 and 45, for designating among others electronic devices, computer programs and dating services. An examiner of EUIPO rejected the application and the case passed through several instances, reaching finally the Court of the European Union, which – by virtue of the judgment of March 20, 2018 rejected the complaint of the Applicant against the decision of the European Union Intellectual Property Office. By same, the Court supported the standpoint of EUIPO, which had stated that the expression "dating bracelet" directly and clearly informs potential consumers about the intended purpose of the product, and the graphic setup accompanying the mark is not unique1.
EUTM no. 017549577
EUIPO, upon examination of absolute grounds of registration, also decided on refusal for the above application in class 30 (bread), arguing among others that each of the elements of the mark is devoid of distinctive character, and the combination of these elements does also not create any other impression. Moreover, "Thus, as a whole, the mark at issue has a sufficiently direct and specific relationship to the goods covered by the registration, enabling the relevant public to perceive immediately the nature and content of those goods and services "2. The Board of Appeal of EUIPO upheld the complained decision3.
EUTM no. 014696165
The above application, filed in class 30 for sweets, was also rejected by EUIPO. By virtue of a decision of March 7, 2017, the Fifth Board of Appeal of EUIPO stated that the expression "sweet mix" (a mix of sweets) will be understood by the target group of consumers as an indication of the sweet taste of goods designated with this mark. According to EUIPO, the applied typeface and the set of colors have decorative character, and the variety of colors only constitutes an enhancement of the meaning of "the mix of sweets", being at the same time a reference to the kind and quality of the relevant goods. Consequently, the mark is devoid of distinctive character4.
Is there anything to be afraid of?
The definition of trademark descriptiveness is commonly understood and accepted, however a difficulty of its interpretation consists in an individual assessment. It depends on perception of every individual person. For one examiner of the patent office or a consumer, a given name will be perceived as distinctive, while by the others it will be regarded as having ordinary character and being commonly used on the market.
What is the standpoint of the Polish Patent Office?
So far the practice of the Polish Patent Office has been based upon a rule that the applied marks including simple, descriptive words, however used along with additional graphic elements, can be regarded as distinctive, and consequently it usually granted them registration.
However, as it can be inferred from the latest information presented by the Polish Patent Office at the recent consultation meetings and lectures, this practice may be changed under the influence of the decisions issued at the European Union level. Although the Polish Patent Office is not legally bound by EUIPO's decisions, it should take them into consideration in its adjudications. Consequently, because of the obligation to observe the rule of uniformity across the EU, registration of a trademark in Poland may become more and more difficult.
So what steps should be taken to protect oneself?
In order to guarantee that the process of trademark registration goes smoothly and efficiently, it is simply advisable to consult a patent attorney before filing an application. A professional agent can easily conduct a full search for the mark and assess whether it is eligible for registration, namely whether it fulfills the requirements for registration on absolute grounds, and whether it does not infringe any earlier rights of third parties.
If the Patent Office claims descriptiveness of the applied mark, it is possible to try to defend the application, however this is not an easy process. Therefore, it is advisable first of all to avoid choosing simple, descriptive terms, and secondly - should any doubts arise – rely on the opinion of a professional trademark attorney.
1. DECISION of the Fifth Board of Appeal of EUIPO as of March 1, 2017 in the case no. R 658/2016-5; Court Judgment (Second Board) of March 20, 2018 in the case no. T-272/17.
2. EUIPO - refusal for application of the European Union trademark no. EUTM-017549577of July 3, 2018.
3. DECISION of the Fifth Board of Appeal of November 14, 2018 in Case no. R 1710/2018-5.
4. DECISION of the Fifth Board of Appeal of EUIPO as of March 7, 2017 in the case no. R 1120/2016-1.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.