It is tempting to remember a name that is descriptive or even very evocative of your product or service. Imagine registering as a brand: VTC Paris for a VTC service on the city of Paris, TRI VERT for a selective sorting service, BUSINESS Coaching for an accompaniment service for business management …
So the customer immediately perceives your business. Moreover, if it were possible to reserve such a mark, no one could use that terminology. What a competitive advantage, right?
But the code of intellectual property limits, fortunately, this scenario.
Let us recall some general principles for assessing distinctiveness
The legislator demanded the existence of distinctiveness of the sign in order for the mark to be validly filed. This condition is easily explained: It is imperative that no one can reserve the use of a mark that would be indispensable or at least useful to competitors.
Imagine that this rule does not exist, anyone would then be free to deposit the « Apple » mark to designate apples. So, how to promote these fruits, if it is no longer possible to designate so. The term « apple » must remain available to all in order to preserve the freedom of competition. However, it is not forbidden to appropriate this term of the common language to designate anything else: APPLE for computer products.
Distinctness is the ability of the mark to distinguish the goods or services of one undertaking from those of other undertakings. The mark must therefore enable the consumer to identify the product as coming from a particular undertaking.
The requirement of distinctiveness is provided for in Article L 711-2 of the Intellectual Property Code:
The distinctive character of a sign capable of constituting a trade mark shall be assessed with regard to the goods or services designated.
The following are devoid of any distinctive character:
(A) Signs or denominations which in the ordinary or professional language are exclusively the necessary, generic or usual designation of the product or service;
(B) Signs or names which may serve to designate a characteristic of the product or service, including the species, quality, quantity, destination, value, geographical origin, time of production of the good or service The provision of services;
(C) Signs constituted exclusively by the form imposed by the nature or function of the product, or conferring on the latter its substantial value.
The distinctive character may, except in the case provided for in subparagraph (C), be acquired by use.
The assessment of distinctiveness shall be made by considering:
- The registered sign
- In terms of products and services
- Depending on the perception by the reference public. The reference consumer must not be able to establish a direct and concrete link between the signs and all or part of the goods and services: the sign must be arbitrary.
Now that you know the rule of the game, let’s see by example what it is not possible to do to get out of the lack of distinctiveness:
- Accommodate generic terms. Ex: « Salondebeauté » for a beauty salon
- Insert dots, dashes between words. Examples: « salon.de.beauté »
- Use an apostrophe between words or to replace one or more silent letters. Ex: « Lunett » for a brand of glasses
- Modify the spelling without modifying the phonetics. Ex: « Lunet » for glasses
- Combining elements without conferring distinctive character: Ex: Lunet’bois for wood frame glasses
- Use an acronym and its syntax (verbalization of the acronym) devoid of any distinctive character. This follows a European decision: CJEU C90 / 11, where it was decided that a mark consisting of two elements (a distinctive acronym per se and a descriptive syntagma) which are mutually explanatory, must be refused or canceled on the Article 3 (1) (c) of Directive 2008/95 / EC. Ex: « CA Crédit Agricole ».
- Use terms that simply denote a positive or attractive quality or function of products and services such as: ECO, MEDI, MULTI, MINI, ULTRA, PLUS, UNIVERSAL, BEST … This type of sign is more intended to constitute a promotional message, An identifier of the products and services, essential function of the brand. Combine a laudative term (definition: refers to a speech to glorify or praise the merits of someone or something) such as: SUPER, BEST, PREMIUM … to a term devoid of distinctive character will be doomed to refusal. Ex: « Best growing » for croissants that we can hope to be the best
- The use of a combination of words, even if not grammatical, can be regarded as habitual in the advertising language and the commercial context in question. This was the case for the combination « ECOPRO », where the « PRO » element is placed after the descriptive element « ECO ». This combination was perceived by the relevant public as an indication that the designated products are intended for ‘ecological professionals’ or ‘ecologically friendly’ (Case T-145/12, judgment of 25/04/2013, Eco Pro, EU: T: 2013: 220, § 29-32).
- Use web extensions or suffixes for top-level domains « .com », « .fr », « .net ». Ex: «venteenligne.com» for a website, www.books.com for printing products
- The use of abbreviations in the legal form of a company (eg SA, Ltd., GmbH, etc.) can not add distinctive character to a sign.