Created a new trademark? Invested your time and money and now you are in the final sprint and the last step, i.e. successful registration of your intellectual property, should be taken? If you answered the above questions positively, you should reconsider if your trademark is really exclusive and if the consumer would be able to identify your goods or services and distinguish them from the goods or services covered by other trademarks.
It should be remembered that, pursuant to Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008, registration of trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services shall be refused. This aims at protecting the public interest and refusing the registration of the trademarks which do not help to distinguish your goods and services from other goods and services for which the registration is requested. Following the Regulation of the European Union and the practices of registration of graphic marks containing descriptive words and words devoid of a distinctive character, below we will give you a few useful examples allowing to better understand if your mark meets the established requirements.
Trademarks are often aimed at registration of different verbal signs. It is therefore very important to know that descriptive verbal elements or verbal elements devoid of a distinctive character written in a standard or hand-written style font are not registered. The trademarks, the only exclusiveness of which is a slightly different font (for example, bold font or italics), are not registered. It should be born in mind that if a standard font logo contains any figurative elements, they should have sufficient influence to the trademark as a whole for this mark to acquire a distinctive character.
The main rule is that the mark is registered if such elements are sufficient for diverting the consumer’s attention from the meaning of the descriptive verbal element or, where possible, creating an impression of a mark which is remembered for a long time. Thus, if the font is sufficiently stylised and graphically represented so that it would be difficult to identify separate letters or words, it is likely that the mark will be successfully registered.
Representation of words in colours
It is rather common to use colours in advertising messages. They may invoke certain associations, emotions; nevertheless, it is considered that colours can hardly convey information. Single coloured representation of a mark is not considered exclusive. Authorisation to register such sign should also be not expected if the descriptive words are in different colours. Certainly, if an unusual combination of colours designed by you is easily remembered, this may be sufficient for acquisition of distinctiveness.
Combinations with punctuation marks and other symbols
Quotation marks, full stop, comma and other punctuation marks, ™ (Trademark) or © (Copyright) sign or symbols which, as a rule, are used in trade do not render the sign distinctive.
Arrangement of verbal elements
If words in the mark are arranged so originally that the average consumer pays attention to it and cannot immediately perceive the descriptive meaning, registration of the mark is likely to be successful. If the letters are simply arranged vertically, the entry is overturned or several words are written in two and more lines, such entry is not likely to be considered as exclusive.
Geometric forms may confer a distinctive character to the sign, but everything depends on representation. It is not enough to frame descriptive words in a triangle, square or another form. Registration will be successful if a unique combination is composed of a combination of geometric forms and other elements or if several forms are combined in an original manner.
Position and proportion of a figurative element
The size of a figurative element is also particularly important. The basic rule is that if a descriptive element devoid a distinctive character is combined with an exclusive picture which is clearly recognisable due to its size and representation, successful registration of the mark is more likely.
Figurative element depicts goods/services or is directly related to them
A figurative element which:
- is a realistic reflection of goods and services
- contains a symbolic stylised reflection of goods and services, which is usual in representation of such goods or services in the eyes of the average consumer
is not a guarantee for success.
Thus, the representation of the trademark must be sufficiently stylised if it depicts the goods for which it is registered.
If composition of the trademark creates an overall impression which is rather remote from the descriptive meaning, the likelihood of successful registration will increase with every additional element. Please note that protection will cover the general composition of the mark and the exclusive right to the descriptive words will not be acquired.
A trademark with a distinctive character will ensure the identity of commercial origin of the goods and services creating a possibility for the consumer to distinguish the goods and services from other goods and services. It is worth recalling that a distinctive character is acquired not only according to formal requirements, but also taking into account the public attitude to the respective goods and services.
The afore-mentioned main guidance on presentation of figurative marks containing descriptive verbal elements for registration and observance of the general practices allow successfully registering own trademark and successfully use it for your goods or services.