Descriptive trademark: why your application may be refused

Filing a trademark is essential for protecting your business. But a common mistake is choosing a mark that is too descriptive. Such a mark is likely to be refused by the INPI or the EUIPO, as it fails to fulfil the primary function of a trademark: distinguishing one undertaking’s goods or services from those of its competitors.

Why is a descriptive trademark refused?

A mark is considered descriptive if it directly describes the product, its use, composition or essential qualities. Trademark law is based on the principle that certain terms must remain available to all. The sign filed in a trademark application cannot be amended after filing.

Common mistakes

Many entrepreneurs believe that an explicit name helps their business. This may be true for marketing, but it is counterproductive for legal protection. Common errors include using generic terms, assuming that a logo is sufficient to make a mark distinctive (it may improve the chances of registration, but the mark will remain weak), and failing to check prior decisions. The INPI and EUIPO case law databases are useful in this regard.

How to avoid a refusal

Choose a suggestive name rather than a descriptive one, create a portmanteau word, or add a distinctive arbitrary or fanciful element. See the trademark filing guide and the intellectual property services page. A refused application also forfeits the fee already paid: see how much it costs to register a trademark.

What to do if your application is refused

It is possible to challenge the decision with arguments demonstrating that the mark is distinctive in its sector, or to revise the strategy and choose a more original name.

Conclusion

A trademark must be distinctive to be protected. Anticipating this requirement from the outset avoids wasted time and money. If you have any doubt about the validity of your application, book a call.

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