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Issues of (semi) descriptive trademarks

Issues of (semi) descriptive trademarks

From a marketing point of view, it is tempting to use semi-descriptive trademarks. With such a trademark, it is immediately clear to consumers what the attributes of a product or a service are. The disadvantage, however, is that descriptive terms cannot be claimed as trademarks and therefore, as a company, you cannot obtain monopolies on the use of such terms. But how do we know when a term is descriptive? What is considered the limit of descriptiveness?

 

Henkel objects to the registration of the trademark GOODBYE YELLOW for hair and skin care products in the Benelux. Before the application of GOODBYE YELLOW, they themselves had attempted to register the trademark GOOD BYE YELLOW (Schwarzkopf) in the EU, which was refused by the European trademark authorities.


The Benelux trademark authorities argue that the mark is indeed invalid (Since the mark describes a characteristic of the product). Goodbye is a common expression to say farewell to something. In this case: aging yellow hair, teeth, skin and nails.

The Benelux Court of Justice upholds this decision. The relevant public will immediately understand the purpose of the product in relation to the goods for which the trademark was applied for.

Therefore, a trademark is descriptive if the relevant public immediately and explicitly understands what a product is for, without the need for an additional explanatory sentence to explain this. Therefore, as a company, choose a trademark where the consumer has to take some steps to understand the purpose of a product, so that the trademark can also be claimed.

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?
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