When doing a trademark registration in the Benelux or EU, the trademark you want to register must be distinctive. But what does this actually mean? And why is it mandatory?
Note: this article is not about checking if your trademark is “available”. Want to know more on checking if your trademark is available? Read my previous article on this subject [in Dutch]!
What is a trademark?
A trademark registration grants the trademark holder a monopoly for use of that trademark for certain goods and services. However, to be granted this monopoly, certain requirements should be met. Distinctive character is one of these requirements. Why? Because a consumer should be able to recognize the company behind a product or service in order to decide which product to buy. An example: when you decide to purchase an APPLE computer, you do that because you expect a certain quality from that trademark. To be able to meet this requirement, a trademark must have distinctive character. To achieve a trademark registration, a trademark therefore must not be descriptive. This test is always done in consideration of the products or services for which the trademark was requested.
What does “distinctive character” mean
A trademark must not tell you anything about the products or services for which it was applied. When it does, it’s descriptive for those products or services. It therefore must not describe the customer of the product or service nor must it describe a certain quality of the product or service. An example of a distinctive trademark is APPLE for computers. An example of a descriptive trademark is APPLE for juices.
Of course you want your audience to know directly what you’re offering. It therefore can be very tempting to apply for a descriptive trademark. However, the challenge is to find a balance between a catchy trademark and one that can actually be registered. Want to know more about this? A while ago I wrote this widely read article on this subject [In Dutch].
A possible solution when wanting to do a trademark registration for a descriptive trademark, is to implement it into a logo. However, logo’s can be descriptive as well. Is a logo nothing more than an illustration of a product or service for which the trademark is applied? Then it probably will be found descriptive. An example: a simple illustration of an apple is just as descriptive for juices as the word “apple” is.
Apply for a descriptive trademark anyway?
If you decide to apply for a descriptive trademark anyway, your application will probably be rejected by the official Office. This means you will lose your application fee. There can be a very thin line between a distinctive trademark and one that is descriptive. When in doubt, contact a specialized trademark attorney.
Want to know more about how to do a trademark registration? Make sure you check my article on how to register your trademark in 5 steps [in Dutch]!