Marks that are inherently descriptive and/or non-distinctive will be routinely refused by any Trademark Office around the world. However, if the descriptive and/or non-distinctive text is accompanied by sufficient stylization then such a mark is capable of proceeding to registration. The crucial question is – exactly how much stylization is required to overcome descriptive and/or non-distinctive text – and this is exactly what we discuss in today’s post.
Ok let’s start with some fundamental principles that are relatively universal amongst all Trademark Offices around the world.
If descriptive and/or non-distinctive text is combined with any of the following then it will generally not generate sufficient distinctiveness for the mark as a whole:
(1) Standard typeface or lettering with or without font effects (italics, bold etc).
(2) Colours used in a standard manner.
(3) Punctuation marks or symbols that are commonly used in the relevant industry.
(4) Simple geometric shapes such as rectangles, lines or circles especially when they are used as a border or frame.
An example of a mark with some of these characteristics is:
This mark has relatively standard lettering, colour usage and a rectangular border. If this mark was applied for with a class 31 specification of “live fish” or “processed fish” in class 29 then it would be a straight-forward refusal by any Trademark Office.
Now that we have discussed what elements are not sufficient to overcome descriptive and/or non-distinctive text, let’s now focus on what can overcome descriptive and/or non-distinctive text.
The strongest way to do this is to simply add highly stylised imagery. An example of this approach is below:
This mark has added a highly stylised image of a fish which would be deemed by any Trademark Office to be sufficient to overcome the descriptive and/or non-distinctive text of FRESH FISH. It is worth noting that the owner of this mark does not obtain exclusive rights for the words FRESH FISH because it is the figurative element that makes the mark distinctive as a whole. The scope of protection of the above mark is limited to the mark as a whole.
If you are not sure whether the stylised imagery of a mark is enough to overcome descriptive and/or non-distinctive text then ask yourself whether the imagery is sufficient to distract the attention of the consumer from the descriptive meaning of the words or if the imagery is likely to create the dominant and lasting impression of the mark. If the answer is strongly in the affirmative, then it is likely that the mark is sufficiently stylised.
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