Descriptive trademark: why your application may be refused?

Registering a trademark is essential to protect your business. But a common mistake entrepreneurs make is choosing a trademark that is too descriptive. Such a trademark may be refused by the INPI or the EUIPO, because it does not fulfill the primary function of a trademark: to distinguish a company's products or services from those of competitors. Here's why and how to avoid this pitfall.

Why is a descriptive trademark refused by the INPI or the EUIPO?

A trademark is considered descriptive if it directly describes the product, its use, composition or essential qualities. For example, “Artisan bread” for a bakery or “Quick clean” for a cleaning service are too descriptive. The INPI or the EUIPO refuse these trademarks, because they do not make it possible to identify a unique player on the market. The sign filed in a trademark application cannot be modified after filing, unless a new application is filed.

Trademark law is based on the principle that some terms should remain available to all. A business cannot monopolize a word in everyday language that directly describes an activity or product.

Some common mistakes when registering a trademark

Many entrepreneurs think that an explicit name helps their business. This is true for marketing, but entirely false for legal protection. A trademark that is too descriptive has only low legal value, if it passes the registration stage, which is not guaranteed. Here are the most common mistakes:

• Use generic terms : A word that is too common or too related to the sector will be rejected.
• Believing that a logo is enough to make a brand distinctive : The addition of a logo does not correct a distinctiveness defect in the name. It may increase the chances of registration but the registered trademark will remain weak.
• Do not check case law : Some brands are refused even though they seem original. Checking past decisions prevents unpleasant surprises. The case law base of The INPI And that of The EUIPO can help you with that.

How to avoid a refusal from the INPI or the EUIPO?

• Choose an evocative name rather than a descriptive one : A name that suggests a quality without describing it directly is more likely to be accepted.
• Create a portword-word : Merging several words helps to avoid a refusal (ex.: “Netrapide” instead of “Quick cleaning”).
• Add a distinctive element : An arbitrary or fanciful term can make a trademark valid.

What to do in case of refusal by the INPI or the EUIPO?

If your deposit is rejected, it is possible to:

• Challenge the decision with arguments that prove that the trademark is distinctive in its sector.
• Review the strategy and choose a new, more original trademark.

Conclusion

A trademark must be distinctive to be protected. Descriptive trademarks often leads to refusal. Anticipating this criterion as soon as the trademark is created helps to avoid wasting time and money. If you have any doubts about the validity of your application, I can help you secure your brand and avoid rejection.