It is not unusual for a company to develop a trademark that contains references to its product or service. However, in order to be protected, trademarks must not contain an inherently intelligible description of the essential characteristics of those goods or services. So what might these characteristics comprise?
Food should ideally be natural, organic and healthy, and the word ‘green’ is often appropriate when referring to such qualities. But can a trademark for healthy food that contains the word ‘green’ be registered?
Allusive marks are popular. They already contain references to the relevant products and their characteristics. Brand developers therefore like to try to ‘make up’ such marks from descriptive terms. But can this lead to problems? Other companies could always build their brands from the same basic words.
Everyone knows Emmentaler – the famous, delicious cheese with the cherry-sized holes and the nutty taste. It was even around in the Middle Ages! Could its name ‘Emmentaler’ be protected as a collective trademark for the members of an association?
Consumers should be able to tell immediately whether the food they are eating is genetically modified. The German Federal Ministry of Food and Agriculture has therefore developed a dedicated GMO-free label, intended to identify the products bearing it as GMO-free. In the meantime, every fifth litre of milk from Bavaria is labelled as being ‘without genetic engineering’. But is the seal, as a trademark, protectable or not? Could it potentially deceive the consumer?
Signs that use the term ‘gourmet’ are very popular in relation to food products, not least because they indicate a higher-quality item. However, as an EU trademark, these signs have already been refused 50 times – because they are classed as advertising material only. They praise one’s own products, but they do not indicate the product’s origin as coming from a specific company.
In practice, trademark development is often carried out without due regard to the legally relevant criteria used to judge the likelihood of confusion with prior marks. This frequently leads to great disappointment and not infrequently to considerable damage. This is reason enough to take a brief look at some of these aspects.
Developing a trade mark requires a lot of thought and great creativity. Depending on the degree of creative activity, copyright protection may arise. This can have far-reaching consequences for the later use of the trade mark.
Designations that describe products or services in some way are not classed as distinctive, as is well known, and therefore cannot be registered as a trademark. However, it is possible to overcome this obstacle to protection – provided the designation has acquired distinctive character before it is registered. What exactly must be done to achieve protectability from a trademark through use?
Special events or festivals often facilitate the sale of products made specifically for those celebrations. Do lesser requirements, in terms of genuine use, apply to event marks because the products can only be sold during certain periods of time?