EU trademark application, EU trademark law, trademark distinctiveness and degeneration
The traditional assessment of the distinctiveness of a brand is closely linked to the national market in which the brand and the product are located. Thus, a trademark may very well be distinctive in one market and non-distinctive in another. The concept of trademark distinctiveness is duly taken into consideration by the law governing the EU trademark application. The trademark attorneys that you find on the website www.damianianddamiani.com, in the registration application evaluate the descriptive capacity and distinctiveness of the trademark necessary for correct registration.
1. When and how a trademark is distinctive
The distinction of the trademark is fundamental for the laws that regulate the application for registration and legal protection of an EU trademark. In the EU, a word describing an object cannot be registered to distinguish a brand. A brand is descriptive if people directly associate the meaning of the word used to distinguish the brand with the product or service it markets.
2. The phenomenon of trademark degeneration
The reverse phenomenon also exists. A registered trademark can degenerate. The word used to distinguish a brand can enter the common use of language, so as to become descriptive for the product for which it was originally the distinctive brand.
In the event of degeneration, the trademark is declared invalid with respect to the products for which it has become descriptive. The words “thermos” and “nylon”, for example, have become descriptive of the products for which they have been registered as trademarks. Another example could be that of the McDonald’s Brand which could become descriptive of burgers.
However, it is possible that a trademark could degenerate in one state and remain distinctive in many others. Such a situation is not problematic for the law that protects the trademark
3. Cases of trademarks degenerating in one market while remaining distinctive in another
An internationally descriptive term should also be considered descriptive at national level. In fact, let’s take the example of a natural product, such as the extract of a leaf of a specific plant of a particular country. The leaf of the plant from which the natural product is extracted exists only in one place and is not known elsewhere. Subsequently, the name of the leaf “rasa” was known in other countries only when the product was introduced as an import commodity in the cosmetics market. In the native language of the country of origin, the name of the product is the name of the leaf that produces the extract. So the leaf name does not exist outside of this country and no other language has a name for that particular leaf.
Let’s consider that the product has been marketed internationally as an export commodity with an additional name, which is a metaphor in English for the “rasa” leaf extract inspired by its skin healing properties. For the sake of anonymity let’’s call it “dew petals”.
“Dew Petals” was not inherently descriptive for the leaf extract, but “Dew petals” has been used descriptively for “rasa” leaf extract for several years. In fact, the product obtained from those leaves is known by all as “Dew petals”, but also with the name of the leaf or “rasa”.
It should also be considered that the product was presented in a descriptive way using both the name of the leaf and the term “dew petals”. Thus, the relevant public has always become aware of the product with 2 names, the leaf name and the secondary trade name.
Evidence showed that the brand had degenerated internationally in the descriptive word for leaf extract. A confirmed fact because no seller had ever registered “Dew Petals” as an exclusive brand. Instead, the 2 product names were used descriptively by everyone.
4. The case of a descriptive word registered as a product brand
In such cases, a situation could arise: if someone, in an EU country where the relevant public does not yet know the product extracted from the “rasa” leaves, registered “Dew Petals” as a generic product class and marketed their products under the brand name “Dew Petals”, importers wishing to introduce the leaf extract “Dew Petals” in that country would not be able to, because the descriptive name of the leaf extract is protected by the law on brands for a generic class of products – in this case, cosmetics.
Consequently, the owner of the “Dew Petals” trademark can prevent anyone from using the name “Dew Petals” for all products in the class, even the extract of “rasa” leaves which is elsewhere described by the name “Dew Petals”.
5. The legal question of trademarks, national trademark protection and international protection
The legal issue that arises is the following: if the importer cannot introduce the leaf extract in the market of the country where “Dew Petals” is registered, it means that in that country the importers are in a position of disadvantage compared to other importers of the same product in other EU countries. They can only use one of the two descriptive names at international level, i.e. only the name of the leaf and not the secondary description “Dew Petals”, although in many other countries “Dew Petals” has a descriptive function of the leaf extract and is therefore a degenerated international brand.
La questione legale che ne deriva è la seguente: se l’importatore non può introdurre l’estratto di foglie rasa nel mercato del paese X in cui è registrato “Dew Petals”, significa che nel paese X UE gli importatori sono in una posizione di svantaggio rispetto ad altri importatori dello stesso prodotto negli altri paesi UE. In sintesi, gli importatori dell’estratto di foglie ras anel paese X possono utilizzare solo uno dei due nomi descrittivi a livello internazionale ovvero solo il nome della foglia e non la descrizione secondaria “Dew Petals”, anche se in molti altri paesi “Dew Petals” ha una funzione descrittiva dell’estratto di foglie ed è, quindi, un marchio internazionale degenerato.
6. National trademark protection. The case of Matratzen mattresses in Spain
International trademark protection law is based on the balance between the need to protect consumers and that to protect trademark owners. It can be taken as an example in cases such as the following: the brand of mattresses “Matratz” marketed in Spain is nothing more than the German word for the mattress. The “Matratz” trademark is provided with national protection, because in Spain the word “colchón” used to describe the mattress is completely different than in Germany.
However, in the case of “Dew Petals”, the same association cannot be made. In that case, instead, the rasa leaf from which the extract is produced exists in one country only, and is unknown in all the others – that is why the name “Dew Petals” has become descriptive and has degenerated internationally.
There is no one-size-fits-all case law on EU trade mark registration that can prevent an EU national market from becoming aware of a term as descriptive, by registering the term as a trademark for the generic class even before the product (e.g. leaf extract) is known.
For this reason, a descriptive term at international level should also be considered descriptive at national level, if it is not yet known as such.
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