For a sign to be registered as a trademark, a certain number of conditions must be met. The sign must be likely to have a graphical representation, have a distinctive character and be legal and available.
The basic function of a trademark is to indicate to the general public which company produces a product or service (indication of origin). A trademark must be designed as a sign which can transmit this information. For example, a trademark may be comprised of words, designs, logos, letters, figures, shapes of products or packaging.
Although in principle there are almost no restrictions in regard to the types of signs which can be considered trademarks, not all signs are immediately able to serve as trademarks. If consumers perceive a sign as more a characteristic of the product or service in question rather than an indication of its commercial origin, the sign does not meet the criteria of identifying the origin of the trademark and the registration request will be rejected. For example, colours, shapes and sounds are not generally excluded as trademarks but they must be examined on a case by case basis to make sure that the public perceives the signs as a trademark, or as a sign which distinguishes the products sold with this colour, shape or sound as coming from a particular company, and not simply as decoration.
It should be noted that the following signs may not be considered trademarks: those exclusively composed of a (i) shape which is imposed by the nature of the product (for example, the normal shape of a knitting needle), (ii) a shape which is required to obtain a technical result (for example, the shape of a screwdriver which provides the best results) and (iii) a shape which provides substantial value to the product (for example, the particularly artistic shape of a crystal vase).
... likely to have a graphical representation
Next, the sign must be likely to have a graphical representation. There is a practical reason for this condition. Trademarks must be registered and this register must be accessible to the public. Consequently, trademark offices only accept signs which are "visually" reproducible.
This graphical representation could consist of letters, figures, lines, images, colours etc.
In all cases, this representation must be clear, precise, complete, easily accessible, intelligible, durable and objective. The goal is for the sign to be described in the trademark register in such a way that any interested party may verify exactly what is protected as a trademark. Although smells and tastes may also be signs, it is more difficult to describe them in a sufficiently complete and precise way; at the current time, they are refused as trademarks.
There are a number of solutions for sounds, such as writing them on a stave or sonogram or adding an audio medium (the latter is accepted for Community trademarks but not Benelux trademarks).
The most essential function of a trademark is to be able to distinguish one company’s products and services from those of another. A trademark must therefore have a distinctive character. The trademark must be able to attract the public’s attention and inform them of which company produced the products or services. The distinctive character of a sign must be examined case by case.
A descriptive slogan or name or a sign which designates a characteristic of the product or service in question will not, in general, be considered sufficiently distinctive.
For example, a simple logo of an apple for a fruit vendor or the word “cheap” for a supermarket does not usually meet this distinctive character requirement. However, it is possible that such signs, which are not intrinsically distinctive, may acquire a distinctive character with consumers after frequent use and end up distinguishing the product in question from other products. If so, an initially descriptive or non-distinctive sign may still be registered as a trademark.
Certain categories of signs are not authorised as trademarks:
- Signs which are detrimental to public order and accepted principles of morality;
- Crests, flags and other state emblems, emblems and names of international bodies, official guarantee and control signs;
- Signs likely to mislead the public in regard to the nature, quality, or geographic origin of products or services;
- Signs for wines and spirits which contain a geographical indication which does not correspond to the real origin of the products.
In order to be considered a valid trademark, the sign must be available for the products or services in question (see the principle of speciality). This means that the sign has not already been registered as a trademark. These prior trademarks – or prior rights – may also prevent anyone from registering a later trademark for the same sign. Holders of these previous trademarks may, in certain cases, undertake opposition proceedings against the registration request or they may, after authorisation of the trademark, introduce a cancellation procedure for the trademark in order to cancel the more recent trademark.
Previously registered trademarks are not the only types of prior art. In certain circumstances, previous use of a sign by a third party may also be an obstacle to a valid trademark, such as the use of a sign as a legal name or trade name.
In addition, it is not possible to register as a trademark a similar trademark which has previously been used in the Benelux for similar products or services (or even outside of the Benelux if the applicant is directly related to the previous user of the sign). This is an example of a "bad faith application" which may be cancelled by a court upon request by the former user.