Taking into consideration the practice of the Office for Harmonization in the Internal Market (OHIM) of the last year, it turns out that applicants are finding it more and more difficult to register combined (visual and verbal) trademarks that contain descriptive elements.
European trademark and design offices has issued recommendations regarding registered trademarks consisting of descriptive verbal elements including visual elements on 2 October 2015. These recommendations thoroughly describe which trademarks should meet the absolute requirements set for trademarks and which trademarks do not meet such requirements. The State Patent Bureau of the Republic of Lithuania has started applying the recommendations from the beginning of this year.
Although the recommendations has came into force in most countries from the 1 th of January, 2016 some changes are already noticeable in the case law of both the OHIM and European Court of Justice. The changed practice emphasizes the most important function of a trademark – the distinctive feature that makes it possible to distinguish one entity’s goods or services from those of another entity.
The General Court established in one of its cases that the trademark “Extra”, the registration of which was applied for, is descriptive in respect of the goods applied while the graphical elements contained in the trademark are not distinctive enough to divert the consumers’ attention from the information that is clearly presented in the verbal element.
As regards another decision issued by the Boards of Appeal (OHIM) it has been stated that the trademark “SimplePay” directly describes the services for which the trademark is applied while the graphical expression of the trademark (selection of the font and colours) do not provide it with any distinctive feature.
Taking the said decisions into account, it can be observed in the changing practice that, when using descriptive verbal elements in trademarks, graphical expression alone will not provide a trademark with any distinctive feature where it is the verbal element in the trademark that dominates. Therefore, one should in each case consider thoroughly whether the dominating verbal element in the trademark which you are planning to register is not merely descriptive. If the verbal element is descriptive, the trademark should be complemented with additional verbal or visual elements which would represent a distinguishing feature and thus would reduce the probability of non-compliance of the trademark with absolute grounds of invalidity. Please note that, when the trademark is complemented with other elements, the latter must not be small or difficult for the consumers to make out, since such an addition may not be sufficient in order to register the trademark successfully.