Trademarks: conditions for protection

A sign must meet a number of conditions in order to be registered as a trademark. The character must be distinctive,  legal  and  available and must be susceptible to depiction in the register.

A sign...

The basic function of a trademark is to indicate to the public, which company a product or service comes from (indication of origin function). A trademark must, therefore, be conceived as a sign that can convey this information. A trademark may, for example, consist of

• words,
• drawings,
• logos,
• letters,
• numbers,
• product or packaging shapes.

Although in principle, there are practically no restrictions on the nature of the sign that can be used as a trademark, not all signs have the same capacity to immediately serve of a trademark. If the consumer perceives a sign more as a characteristic of the product or service in question than as an indication of its commercial origin, the sign clearly does not fulfil the original function of the trademark and the registration will be rejected.

• Colours,
• shapes and
• sounds,

for example, are, in principle, not excluded as a trademark, but must be examined on a case-by-case basis so that the public perceives these signs as a trademark, i.e. as a sign that distinguishes the product sold in that colour, shape or sound as coming from a particular company, and not merely as a decoration.

It should be noted that signs that are made up exclusively of the following elements may not be considered as trademarks:

• a shape that is determined by the nature of the product (e.g., the normal shape of a knitting needle);
• a shape that is necessary to obtain a technical result (e.g. the shape of a screwdriver for obtaining better results);
• and a shape that gives substantial value to the product (e.g., the particularly artistic shape of a crystal vase).

See also examples of trademarks.

Distinctiveness

The most essential function of a trademark is to be able to differentiate the products and services of one company from those of another. A trademark must, therefore, have distinctiveness.

The trademark must

• be able to attract the attention of the public and
• be able to inform which company the products or services come from.

The distinctiveness of a sign must be examined on a case-by-case basis.

• A descriptive slogan or denomination, or
• a sign that can be used to depict a characteristic of the product or service in question (such as, e.g., an indication that can be used to designate the type, quality, quantity, destination, value, geographical origin or time of production)

will, in principle, not have sufficient distinctive character.

For example, a simple logo of an apple for a fruit seller or the word "cheap" for a supermarket hardly fulfils this requirement of distinctiveness, whereas such a logo would be possible for other types of products, such as cosmetics or computers. However, it is possible that such signs, which are inherently non-distinctive, through frequent use (and regular advertising) may acquire a distinctive character among consumers and eventually be able to distinguish the product in question from other products. From that moment on, an initially descriptive or non-distinctive sign may still be registered as a trademark.

Legality

Certain categories of signs are not allowed as trademarks:

• signs that are contrary to public policy or morality;
• coats of arms, flags and other national emblems, emblems and names of international bodies, official guarantee and control signs;
• signs likely to mislead the public, e.g. regarding the nature, quality or geographical origin of the goods or services;
• signs corresponding to protected designations of origin or geographical indications;
• signs corresponding to traditional indications for protected wines;
• signs corresponding to protected traditional specialities guaranteed;
• signs consisting of a denomination of an earlier registered plant variety or reproducing it in its essential elements, and which relate to plant varieties of the same species or of a closely related species.

Availability

In order to establish a valid trademark, the sign must be available for the goods or services in question (see the speciality principle). This means that the sign (or a similar sign) has not already been registered as a trademark for identical or similar goods or services by another party. Such earlier trademarks - also known as prior art - can thus prevent the subsequent registration of a trademark on the same sign.

The holders of these identical or similar earlier trademarks may, in certain cases, launch an opposition procedure  against the application for registration or, after the granting of the trademark, they may begin a procedure to have the more recent trademark declared invalid.

Not only earlier registered trademarks can constitute prior art. In certain circumstances, prior use of the sign by a third party will also be an obstacle to obtaining a valid trademark - such as, e.g., use of the sign as a company or trade name.

Neither is it possible to register, as a trademark, a sign for which it should be clear that it has been previously used in the Benelux for similar goods or services (or even outside the Benelux, if the applicant is in direct contact with the earlier user of the sign).

In such cases, we refer to a "filing in bad faith" which, at the request of the earlier user, may be declared invalid by a court.

Depiction in the register

Finally, the sign must be susceptible to depiction in the register in a way that allows the competent authorities and the public to determine the sign accurately and clearly. There are practical reasons for this condition. Trademarks must be registered, and it must be possible to consult the register of trademarks. Consequently, trademark offices only accept signs that can be depicted in the register.

This depiction can be done by

• letters,
• numbers,
• lines,
• images,
• colours,
• etc.

In any case, the depiction should be

• clear,
• accurate,
• complete,
• easily accessible,
• comprehensible,
• durable and
• objective.

The aim is that the sign is described in the trademark register in such a way that any interested person can check what exactly is protected as a trademark. Although perfumes and odours can also be signs, representing them in a sufficiently complete and accurate way is more difficult. If this is not possible, they will be refused as trademarks.

With regard to sounds, there are a number of solutions such as notation on a stave or a sonogram or adding an audio file (mp3).