Descriptive marks, hovering between trademarks and generic words
We're talking about descriptive marks - Black Friday, hovering between trademarks and generic words.
Summary:
The descriptivity of marks related to common words
European legislation and jurisprudence on descriptive trademarks
Users want descriptive marks, like "Black Friday"
THE DESCRIPTIVITY OF MARKS RELATED TO COMMON WORDS
All over the world, the assessment of the distinctive character of a trademark application is increasingly attracting the attention of examiners and operators in the sector, above all because the attempt by users to appropriate terms that arise, spread and consolidate in everyday practices is growing.
EUROPEAN LEGISLATION AND JURISPRUDENCE ON DESCRIPTIVE TRADEMARKS
According to the constant community jurisprudence, recognizing the distinctive character of a trademark means allowing it to identify the product and / or service for which registration is sought as coming from a specific company and, therefore, to distinguish this product from those of other companies. According to settled jurisprudence, distinctiveness can be assessed only in relation, firstly, to the products or services for which registration was requested and, secondly, having as a parameter the perception of the sign by the public of reference.
However, when these jurisprudential principles must be applied to concrete cases, interpretative conflicts arise.
For example, as for the Community trademark, EUIPO's practice pushes towards a link between the objections raised under Article 7 paragraph 1, letter c) and the provisions included in Article 7 paragraph 1 letter b) to the point that if an examiner were to reject a trade mark as being exclusively descriptive of the goods and / or services considered (Article 7 (1) (c), this sign would necessarily be devoid of distinctive character within the meaning of Article 7 (1) (b).
However, the original intent of the legislator would not be in line with the practice adopted by the EUIPO, given that the two paragraphs (letter b and letter c) are explicitly placed on two different levels, more general point b), more pertinent to the case point c).
The fact remains that a trademark contrary to the above mentioned legal provisions, both in Europe and in the rest of the world, risks being perceived by the public as an element that only provides information on the nature of the related products and/or services, but that does not indicate its origin.
USERS WANT DESCRIPTIVE MARKS, LIKE "BLACK FRIDAY"
The phenomenon of descriptive marks is taking hold because the subjective impulse to take possession of the word of the moment seems to be irresistible. Remember the massive request for trademark applications concerning the word TSUMANI after the 2004 catastrophe, or what is happening with the expression «Black Friday».
A still in progress case is well known in Germany, concerning the invalidation of a "Black Friday" registration belonging to a Hong Kong company. A quick search in the various databases is enough to realize that the trademark "Black Friday" appears to be registered to numerous other subjects.
The problem concerning "Black Friday" and other registrations using common and / or descriptive words moves therefore elsewhere, on one hand on the right conferred ex lege to the owner, and on the other on the flooding that these marks cause in the registers.
The first point is quite clear: what could happen if the ideal owner of the trademark "Black Friday" wakes up one day and decides to inhibit the use of this term for those who adopt it to promote a discount Friday? Probably, the owner of the brand would be left empty-handed but not after having created quite a panic, loss of time and money for the victim who ended up in the network, and forced to defend himself.
The second point is connected to the invalidity of marks that is gradually passing to the trademark offices. Therefore, in the short and medium term, we can expect a massive recourse to these procedures whose outcomes, however, will be far from obvious.
In the meantime we just have to wait for the next big hit and who will be the first to grab it as a registered trademark!
Praxi IP consultants are available for further information contact@praxi-ip.praxi.