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OHIM´s current practice in analysing distinctiveness and descriptiveness of trademarks

The European Community Office has shifted from having quite a lax position on its analysis, allowing the concession of descriptive trademarks with lack of distinctive character, to a less flexible position.

Due to the application of the new OHIM directives as from January of this year, there has been a change in the trend of the application of the absolute grounds for refusal to register a trademark in sections b and c of article 7.1 of the CTR.

Article 7.1 b and c of the CTR provides that the following shall not be registered:

b) trademarks which are devoid of any distinctive character;

c) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

The requirement for the distinctive character of trademarks included in article 7.1 b) is due to the essential function of the trademark being the identification of the trade origin of the goods, thus guaranteeing the consumer or end user the identity of their source.

Therefore the marks to be registered should possess this distinctive character and the lack of such will result in its rejection by the Office.

In particular, letter c) of article 7(1) of the CTR refers to the descriptiveness of signs as a reason for refusing their registration as they do not comply with the function of identifying the trade origin of the goods. The prohibition in section c avoids the registration of signs which are not different from the normal way of distinguishing goods or services or their characteristics, and are therefore devoid of distinctive character.

In accordance with the Court of Justice of the EU “any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character” and a minimum distinction is sufficient to avoid double grounds of refusal in article 7.1 b and c of the CTR.

Consequently, for a trademark to come within the scope of the prohibition on registration included in article 7.1c of the CTR there must be a sufficiently direct and specific relation between the sign requested (sign, term or combination) and the goods or services claimed which allows the public receiving them to perceive the mark as a description of the goods or some of its characteristics.

This direct relation or link seen by the consumer or end-user of the good is what is relevant, and can be determined by the meaning of the specific term or sign in dictionaries, commercial uses or customs etc. and, in relation to the European community as a whole, one part of it or to a single Member State.

The descriptiveness and lack of distinctiveness acquires relevance not only in the examination of absolute grounds for refusal by the Office but also in the comparative analysis between signs either in the opposition or annulment procedure, and therefore, it is of vital importance to avoid these kind of marks and clearly differentiate them from those which are merely suggestive or evocative, which do enjoy protection under the European Trademark System.

With suggestive marks there is no direct or immediate relationship between the sign or mark and the goods and services, but the relevant target public must make a mental effort, albeit slight.

Therefore they have an indirect, vague or allusive link to certain characteristics of the goods which they refer to and not direct, and, as such, can serve to distinguish the source or trade origin of the products (Judgment of 31/01/2001, T-135/99, ‘Cine Action’, para. 29). In this context, a mark can be different from the goods of a manufacturer in particular in virtue of article 7(1)(b), and however, also contain descriptive information of the said goods to a certain degree. (NETMEETING case, and recently the Ruling of the CJEU case T428/12, with regard to the term CINE ACTION).

Following this analysis we have reached the conclusion that, although there is still room in the European Community system for suggestive and strategically commercial marks which indirectly provide information on certain characteristics of the products, the premises put forward must be taken into consideration prior to requesting this kind of mark, thus avoiding possible objections to their registration.