European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

A descriptive mark cannot be validly registered  (Directive No 2015/2436, Article 4(1)(c)) unless it has acquired a distinctive character through use (Directive No 2015/2436, Article 4(4)) . Although a descriptive mark might be considered as a specific case of non-distinctive sign, it cannot be deduced from it that a mark is devoid of any distinctive character on the sole ground that it is descrip …

Descriptive trade marks

A descriptive mark cannot be validly registered  (Directive No 2015/2436, Article 4(1)(c)) unless it has acquired a distinctive character through use (Directive No 2015/2436, Article 4(4)) . Although a descriptive mark might be considered as a specific case of non-distinctive sign, it cannot be deduced from it that a mark is devoid of any distinctive character on the sole ground that it is descriptive . Descriptive trade marks are those 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 and services.

The assessment of the non-descriptive character of a trade mark is carried out in concreto, with a view to the specific characteristics of the trade mark (word mark, figurative mark, etc.), by reference to the goods or services mentioned in the application for registration, to the perception of the relevant public, and to all the relevant facts and circumstances. The descriptive character of a word mark depends on both the aural and the visual impression it produces . A word sign is descriptive if at least one of its possible meanings designates a characteristic of the goods or services concerned . Since, because of linguistic, cultural, social and economic differences between the Member States, a trade mark may be descriptive in one Member State and not in another Member State, the competent supervisory authority must verify whether the relevant parties in the Member State in which registration is sought are capable of identifying the meaning of a term borrowed from the language of another Member State in which it is descriptive .

A trade mark consisting of a composite word , of the juxtaposition of a descriptive word combination and a letter sequence which is non-descriptive in itself but which reproduces the initial letters of the words making up that word combination  or a neologism , each of which is descriptive of characteristics of the goods or services, is in itself descriptive of the characteristics of those goods or services. Neither the existence of synonyms or more customary signs or indications to designate the characteristics of the goods or services, nor the number of competitors which may have an interest in using these signs or indications, fall within the context of the assessment of the descriptive character of the mark. However, the composite word loses its descriptive character where there is a perceptible difference between the word and the mere sum of its parts, because of the unusual nature of the combination or because the word has become part of everyday language and has acquired its own meaning. It is thus necessary to ascertain whether that word is not itself descriptive.

A packaging of a three-dimensional shape assimilated to the shape of the goods may also have a descriptive character, including concerning the quality of the goods. The competent authority must examine the relationship between the packaging and the nature of the goods and may possibly take account of the registration in another Member State of an identical trade mark for goods or services identical to those for which registration is sought .

Lastly, an indication of the geographical origin of goods has a descriptive character whether it indicates the place where the goods were or could be manufactured, or other ties, such as the location where the goods were conceived and designed . However, both the directive (2015/2436, Article 28(2)) and the regulation relating to the Community Trade Mark (Article 66(2)) provide, by way of an option , that the Member States may authorize the registration of the geographical origin as collective, guarantee or certification marks. 

Incorporating Art. 3(1)(c) of Directive No 2008/95.

Incorporating Art. 3(3) of Directive No 2008/95.

Case C-108/97 Windsurfing Chiemsee [1999] ECR I-2779, LawLex200700001787JBJ, which considers, however, that a geographic name may be registered as a trade mark where, following the use which has been made of it, it has come to identify the product in respect of which registration is applied for as originating from a particular undertaking.

 Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, LawLex200900000525JBJ: a mark may be devoid of any distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive.

Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, LawLex200900000525JBJ.

Case C-265/00 Campina Melkunie [2004] ECR I-1699, LawLex200900001045JBJ.

See Case C-421/04 Matratzen Concord [2006] ECR I-2303, LawLex200900000776JBJ.

Case C-90/11 Strigl v Deutsches Patent - und Markenamt, Judgment of 15 March 2012, LawLex201200001484JBJ. 

E.g.: the word "Postkantoor" which may be translated as "post office", See Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, LawLex200900000525JBJ.

See Case C-218/01 Henkel [2004] ECR I-1725, LawLex200900001242JBJ, for a tall bottle intended for liquid detergents.

European Business Law

235. Descriptive trade marks

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

235. Descriptive trade marks

Demandez un accès gratuit au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise