Descriptive marks are refused by the trademark Office without pardon. Everyone may think that you cannot deposit the word "butter" as a brand for butter so that others can no longer use the word "butter". Such "kind of names" are to be kept free for everyone. It is just as obvious that the same applies to "descriptive" words such as "yummy" and "cheap".
But what if you use a word that is not entirely descriptive, or that differs from the normal language? Think of for example SOX for socks, or "pop price" for something in the offer. What about it?
In the past, it was sometimes possible to register such words in the registry. Then one had a "registration" and if someone used that brand, the depositor could ask the court to pronounce a ban. Incidentally, it was still questionable to what extent the court would grant some protection to the deposit. The Trademark Office decides initially whether a brand is refused or not, but the court has the last word.
At the moment there is a climate in Europe where it is virtually impossible to register a word or combination of words if these words are somewhat descriptive. In November 2017, the official trademark Office for the Benelux (Benelux Office for Intellectual property) has declined more than 200 applications for registration – which is probably about 10% of all applications. A few examples of rejected brands are:
THE FAMILY SHOP for all kinds of household products
NUTRIBABY for baby food
HORECA Magazine for a magazine
IJssel Bock for beer
The SLAAPWELWINKEL for a bed shop
Mark Pest Control Netherlands for a Hallmark
Tropenmuseum for a museum
SHAREWHEELS for Passenger transport information
If you cannot protect a name, it doesn't make much sense to invest in it. Every euro you spend on advertising and promotion will also give you the benefit of your competitor.
Moreover, in addition to trademark law, we also have the trade name right. Under the trade name right it is often possible to protect descriptive names. Think of "media market", for example. Such a name can be protected as a trade name, but presumably not as a brand.
If you have any questions about the introduction of new names, or about the protection of your current names, please do not hesitate to contact us. With over 40 years of experience in the field of brands, we can answer all your questions quickly.
