Authors: Aivija Zilione, Trademark and Design Consultant at METIDA, Reda Zaboliene, Managing Partner, Attorney-at-Law, Patent Attorney, European Patent Attorney, European Community Trademark and Design Attorney at METIDA
When creating and registering a trademark, you should remember that the primary function of the trademark is to distinguish one person’s goods or services from another. Hence, the registered mark must have a distinctive character and cannot be generic or indicate only the characteristics of the goods or services.
Usually trademarks are made up of key words, names, numbers, other graphic elements or their combinations which are either artificial or unrelated to the goods and services they mark. However, there has been a recent increase in the number of cases when a company or a person are seeking to acquire the exclusive rights to the use of marks or indications, which describe the features of registered goods/services.
For example, the case BSH Bosch und Siemens Hausgeräte GmbH vs the Office for Harmonisation in the Internal Market questioned whether the mark ecoDoor, which describes one of the features of the components of applied goods (various machines and devices) can be registered as a trademark. The European Court of Justice upheld the earlier decision by OHIM’s Board of Appeal that the mark applied for was descriptive of an essential characteristic of the component of goods indicated in the application – the doors -, i.e. their ecological character, in that it described the ecological qualities of the whole goods themselves. The court usually refuses to register this type of trademarks, therefore this decision was not unexpected. On the contrary, it reflects the general trends of judicial decisions in the EU courts, i.e. that they are more rigorous when assessing the descriptive nature of the mark.
Hence, the trademark creators and proprietors should give up egoistic desire to usurp the rights of the marks that should be used freely by all parties in light of the public interest. Even if this kind of trademark was successfully registered, its legal protection and value would be questionable. It is better to invest more time and money into the development of an original trademark, whose placement on the market is more demanding, but the enduring value is higher.