Trademark law: Understanding Refusal for Descriptive Trademarks

27 February 2023

A trademark is a distinctive sign in the form of a name or a symbol that identifies and distinguishes the goods or services of one company from those of another. Often being a company’s most valuable asset, the protection of trademarks is crucial for businesses to safeguard their brand identity.

To successfully register a trademark, certain requirements must be met. Absolute grounds for refusal of registration are set out in Article 7 of Regulation (EU) 2017/1001 of the European Parliament and Article 5 of Chapter 597 (Trademarks Act) of the Laws of Malta. This article focuses on the refusal of trademark registration for descriptive marks, which are signs or indications that describe characteristics such as kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other features of goods or services.

What is considered a descriptive trademark?

The European Union Intellectual Property Office (EUIPO) provides guidelines on the notion of descriptiveness stating that “a sign must be refused as descriptive if it has a meaning that is immediately perceived by the relevant public as providing information about the goods and services applied for.” The public interest underlying Article 7(1)(c) is that exclusive rights should not exist for purely descriptive terms, which will most probably be used by other traders.

Case Law example of refusal for a descriptive trademark of its intended purpose

A case that illustrates the European court’s reasoning and interpretation of Article 7(1)(c) is referred to as the ‘NURSERYROOM’ (Anna Geddes v. Office for Harmonisation in the Internal Market 30/11/2004 – T-173/03). This specific trademark application sought registration in various classes of goods, including books, stationery, cards, diaper bags, plates, cups, hats, shoes, mobiles, baby clothing, booties, layettes, and plush toys. The application was rejected on the ground that the mark was descriptive of the intended purpose of the goods covered.

Essentially, ‘intended purpose’ refers to the function or expected result from the use of a product or service. For example, the mark ‘SLIM BELLY’ was denied registration because it described the intended purpose of the fitness training apparatus, sports activities, medical and beauty care services. (vide judgment T-61/12 decided on the 30th of April 2013).

In the case at hand, the applicant argued that the words ‘nursery’ and ‘room’ – which constitute the proposed trademark- were not directly related to the goods at issue nor did they convey their purpose or necessarily mean that the goods in question were for use in a nursery room. The applicant further argued that the mark ‘NURSERYROOM’ was suggestive rather than descriptive.

In response, the Office for Harmonisation in the Internal Market (“OHIM”) asserted that the distinctiveness of a trademark should be evaluated based on two criteria: the goods or services it pertains to, and the perception of the relevant public – which, in this case, was identified as the average English-speaking consumer.

OHIM argued that the immediate meaning of the ‘NURSERYROOM’ mark – which refers to a place for children – must be considered in light of the goods in question. Some of these goods, such as diaper bags, baby clothing, booties and plush toys are exclusively intended for use by babies or young children. The rest of the goods, including books, stationery, cards, plates, cups, hats and shoes could also be used by this user group. This meant that the ’NURSERYROOM’ mark was well-suited to convey the intended purpose of the goods. In OHIM’s view, the fact that the goods could be used outside a nursery did not diminish the descriptive nature of the mark. In other words, even though the items could have multiple uses, the public would still easily associate them with a nursery setting and young children.

Finally, OHIM maintained that the words comprising the ‘NURSERYROOM’ mark immediately convey the intended purpose of the goods, without requiring further thought or interpretation. This is because the combination of these words is commonly used to refer to a room intended for use by children. Moreso, the OHIM emphasised that the term ‘NURSERYROOM’ is not arbitrary or inventive, as it follows regular grammatical rules, and the mere combination of the words does not suffice to make it non-descriptive.

Ultimately, the decision of the court to reject the ‘NURSERYROOM’ trademark underscores the importance of considering the relationship between a proposed trademark and the goods or services it pertains to, as well as the perception of the relevant public.

How we can help

AE Legal is geared to handle all areas of intellectual property, be it Trademarks, Patents and Designs or Copyright at the local, EU and international levels. We can assist with trademark searches, registrations, renewals, opposition proceedings and other related services. Our experience spans a breadth of industries, making us perfectly placed to guide you toward maximum protection for your intellectual property.

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