Descriptive Trade Marks - Tactics To Avoid Refusal

Choosing a brand name requires careful consideration. Think about your target customers, positioning in the market, finance and protection. As a brand management adviser at Pictons Solicitors Emma Lambert is aware that there is a common misconception that a brand should describe the product or service being provided. From a trade mark and durable brand point of view this is not the case. In this article Emma examines the current legal approach to descriptive trade marks and sets out practical points for choosing your brand names.

Under EU and UK trade mark legislation a mark that describes the goods or services to which it is applied is barred from registration¹.

In the last two years there have been various cases² which have considered the registrability of trade marks (in the UK and in the EU) which are descriptive of the characteristics of the products for which the mark is to be used. These cases (BABY-DRY, DOUBLEMINT and POSTKANTOOR) hold important lessons for brand owners.