Distinctiveness of a trademark. An approach from an Ibero-American perspective.

March 2021

One of the most controversial aspects in the world of Intellectual Property is the denial of registration of a trademark due to its lack of distinctiveness. Escape route or reality?

One of the fundamental requirements to be able to access the registration of a trademark, in addition to the fact that it can be represented in the Registry in question, is to have the ability to distinguish the products or services of your company from those of others. That is: having a distinctive character. But what does a brand need to be considered distinctive?

Following the recent resolution of the FERRERO case, we will analyze what these distinctiveness requirements are. The Italian company, known by all as one of the giants of sweets, has been granted an international figurative trademark (no. 1532264) consisting of the drawing of its typical slice of bread with freshly spread chocolate, which is represented by the presence in the drawing of a spreading knife stained with chocolate, together with three hazelnuts stuck to the bread and at the bottom a glass filled with milk.

There are many countries in which said trademark is registered in the exact way in which it has just been described, among them: Spain, Argentina, Mexico, Colombia, Brazil, Chile and a very long etcetera (in the international application one hundred three (103) countries were designated!). However, in Portugal, the INPI decided, ex officio, to provisionally deny the registration of the trademark in its country. The reason? Among others, lack of distinctiveness, of course. It was in the Appeal´s stage that the INPI finally declared the granting of the protection of the trademark.

This poses several questions: what are the distinctive character requirements of a brand? How do I get a brand to meet the distinctiveness requirements? Is the brand required to have distinctiveness from the beginning or can it be acquired over time?

Well, in relation to the first of the questions, that is, the requirements of the distinctive character of a trademark, it is not infrequent that both the Court of Justice of the European Union and the Courts of various Latin American countries have pronounced on this question, making it clear that “in order to determine the distinctive character of a trademark and, consequently, assess whether it has a high distinctive character, the national court must assess overall the greater or lesser aptitude of the trademark to identify the products or services for which it was registered, attributing to them a specific business origin ”(Judgment of 06/22/1999, C-342/97, Lloyd Schuhfabrik”, EU: C: 1999: 323, § 22).

In other words, the fundamental requirement of the distinctive character of a brand is to distinguish (worth the redundancy) its products or services and its business origin from those of other companies.

Now, how do we get a brand to meet these requirements? Let’s see it with some examples:

– DSS Sustainable Solutions Switzerland requested its international registration as a trademark, however, the SPTO in this case, denied its registration in Spain due to lack of distinctive character, claiming that: “it does not allow the identification of a specific business origin in relation to the products and services requested since “DSS” is a Decision Support System (DSS for its acronym in English Decision Support System), that is, a computer system that supports the decision-making process, since “Sustainable Solutions” are terms without distinctive ability; and, therefore, the interested public will not identify it as a distinctive sign.

– Another example that did not meet the requirements, in this case, in the opinion of the EUIPO, was the company MacPaw (a US software development company) that requested to register the word “MAKE USEFUL UNBORING” as a trademark, which was denied. because “the sign does nothing more than inform consumers in a complimentary way of some positive qualities of the services and consumers will not need any mental effort to instantly grasp this message, and they will not perceive the sign as an indication of commercial origin. Therefore, the sign, as a whole, lacks distinctive character”.

As we can see, in the previous cases both institutions deny the registration of the trademark in their respective territories due to lack of distinctive character since they do not really identify the business origin of their products and / or services insofar as they are too generic or descriptive that do not distinguish the product in question that is offered.

Therefore, to ensure that a brand enjoys a distinctive character, we must ensure that it is not a brand that is exclusively composed of signs or indications that indicate the species, quality, quantity, destination, value, geographical origin or time of production of the product; nor the provision of the service itself (as provided in article 8.1.c) of the RMUE). Nor trademarks that consist exclusively of signs or indications that have become common in the common language or in the fair and constant customs of the trade (article 8.1.d) of the RMUE).

Perhaps the INPI, in the FERRERO case, initially considered that the fact of trying to register a drawing consisting of a bread with chocolate was generic, since it did not consider that the public would immediately relate said image to FERRERO, thus existing the possibility of identifying it with another company operating in the confectionery sector. However, in the second instance, it seems that it changes its mind and is also granted the registration of the trademark in Portuguese territory. Which brings us to the last of the questions, whether it is necessary for the brand to enjoy distinctiveness from the beginning or it can be acquired over time.

Of course, as we have been mentioning from the beginning, the distinctive character of a trademark is mandatory to proceed with its registration from the moment it is requested. However, it may happen that at first the brand does not have a distinctive character, but has acquired it over time through its use, and of course, through a very good marketing strategy to get the brand to land on the market. public, so that the average consumer can identify it with the products or services in question and with its business origin. Therefore, in this case, the applicant, in order to demonstrate that the distinctiveness of its trademark has been acquired by the use of it, should prove the existence of a link between the sign, the products or services and its business origin, thus as the average consumer relates such products or services with said sign and said business origin (some examples: judgments of 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU: C: 1999: 230 , §52; 05/19/2009, T-211/06, Cybercrédit et al., EU: T: 2009: 160, § 51).

This is always a tricky question which needs to be analyzed on a case by cases basis. For the records, though, I assure you that being a kid, I immediately recognized the origin of the products identified with this picture! And still do…

Eduardo Zamora / Sara del Río