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Analysis of distinctiveness in relation to specific types of mark

Although the criteria relative to the evaluation of the distinctive character contained in sections b and c of art. 7.1 of the Community Trade Mark Regulations are the same for the different types of mark, the perception of the relevant public is not necessarily the same for each of these types and it may, therefore, be more difficult to determine the distinctive character in determined classes of signs, as is the case of slogan marks, neologisms, and figurative or three-dimensional marks:

Slogan mark

According to settled case law, the distinctive character of a trademark consisting of an advertising slogan must be recognized if, in addition to its promotional function, it can be immediately perceived by the relevant public as an indication of the trade origin of the goods or services in question [Court judgments REAL PEOPLE, REAL SOLUTIONS, dated 31st March 2004]. On the other hand, it should be considered to be devoid of distinctive character if the relevant public can only perceive it as a merely promotional formula.

In order to confirm the lack of distinctive character, it is enough for the semantic content of the sign in question to indicate to the consumer a characteristic of the goods or service which, without being specific, has its origin in information of a promotional or publicity character which the relevant public will immediately perceive as such and not as an indication of the trade origin of the goods or service [Court judgments dated 3rd July 2003, BestBuyConcepts].

Neologisms

In principle, a mark whose registration is being applied for that consists of a neologism or a word composed of elements, each of which describes the characteristics of the goods or services, is at the same time descriptive of the characteristics of the said goods or services, except if it creates an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed. In this case the said combination shall be considered to prevail over the sum of its parts [“Biomild” case judgment dated 12 February 2004, C-265/00]. It is, therefore, not sufficient to confirm the possible descriptive character for each of its elements, it is also necessary to verify whether the neologism in itself or the combination of words have this descriptive character in order for registration to be rejected [Court judgment PAPERLAB dated 14th June 2007, /OHIM (EUROPIG) and, recently, the BETWIN judgment T-258_09, 06.07.11].

Figurative trademarks

With respect to this type of marks the figurative elements most commonly used in trade in relation to the goods and/or services claimed add no distinctive character to the sign as a whole. However, when a figurative element that is distinctive in itself is accompanied by a descriptive word and/or which is devoid of distinctive character, the mark can be registered provided that the figurative element is clearly recognizable by its size and the position is occupies in the sign. (Eurohypo AG/OHIM)

Three-dimensional marks

Finally, with relation to these marks, we must distinguish between:

Shapes that bear no relationship to the goods and services in themselves, and which usually have a distinctive character.
When the shape coincides with that of the goods for which the application has been made. In these cases even the usual shape of the goods can be registered as a three-dimensional mark if it contains other elements, such as words or labels, which give the mark a distinctive character. Generally speaking, any element which is distinctive in itself will provide the three-dimensional mark with a distinctive character always supposing that it is perceptible during the normal use of the product.
It is a different matter when the distinctive character is provided by the shape itself. In this sense, the basic criterion is whether the shape is significantly different from the basic, common or expected shapes, allowing the consumer to identify the goods by their shape alone and acquire the same article again (e.g. frozen vegetables in the shape of a crocodile) will have a distinctive character.
The shape of the packaging or the container. Also with regards to the containers, the functional aspects of a specific element must be taken into consideration and the shape whose registration is being applied for must be considerably different from a combination of basic or common elements and also attract attention (the Granini bottle is a clear example of admissibility as a distinctive mark).
Therefore, before registering this type of mark we must take into consideration the perception which, according to the Practice of the OHIM and the case law of the CJEU described, the relevant public has in each of the categories of marks mentioned.

Esther Armero