Distinctiveness

Distinctiveness is the ability of a sign to tell consumers “this product comes from this undertaking”. Because this is the very function of a trademark, signs without distinctive character cannot be registered (IPL Article 5(1)(b)).

Non-Distinctive Signs

Under IPL Article 5, the following in particular are absolute grounds for refusal:

• Descriptive signs: Signs indicating the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or services (e.g. “Fresh” for dairy products).
• Customary signs: Signs used by everyone in the trade or identifying a particular profession, craft or trade group.
• Simple and banal signs: Single letters, basic geometric shapes or general laudatory expressions that consumers do not perceive as an indication of origin.

How It Is Assessed

Distinctiveness is assessed in relation to the goods and services claimed, not in the abstract. “Apple” is descriptive for fruit but distinctive for computers. The benchmark is the perception of the average consumer of those goods and services. The sign is considered as a whole; descriptive elements combined with a distinctive device or word may be registrable, but protection then rests mainly on the distinctive element.

Acquired Distinctiveness

A sign that is not inherently distinctive may come to identify a particular undertaking through long and intensive use, and may then be registered; see Acquired Distinctiveness.

Loss of Distinctiveness

A registered mark may lose its distinctiveness over time. If, as a result of the owner’s acts or failure to act, the mark becomes the common name of the product, this is a ground for trademark revocation.