For many years, adding device elements to descriptive words included in trademarks has been sufficient for obtaining distinctiveness – non-distinctive words could be registered if only a device element was added. Of course, the scope of protection would be reduced compared to distinctive word marks and in that sense the value of the trademark was limited.
OHIM has changed and is still in process of changing their practice regarding device marks including descriptive words. The change implies that a device mark including descriptive word(s) does not necessarily have the necessary distinctiveness per se. Now, also the figurative elements are evaluated.
A special typeface or simple device element may not suffice in terms of adding distinctiveness. Examples of such are marks consisting of a descriptive word written in italics, adding a circle around the word, placing a dot above the word or underlining the word. But also other device elements may not be sufficient as it was decided in the application for the device mark BEST BUY sought for services in classes 35, 37 and 42 – see T-122/01. The trademark consisted of a yellow price tag containing the words BEST BUY in black. This mark was not accepted for registration and one of arguments therefore is that the trademark “is merely composed of elements which, when examined separately, are devoid of distinctive character for the marketing of the services concerned. Nor is there any interaction between these different elements which might confer a distinctive character on the whole” .
Simple device elements are not sufficient, but more complex device elements may be. The more complex a device element, the more distinctive a trademark. But where is the line between acceptable marks and unacceptable marks?
According to OHIM, they will also consider whether a device element is commonly used within the line of business. The question is to which degree and how similar? And will the list of goods and services, which is usually affected by the line of business, also be taken into account? I trust that these matters will also be taken into account and if so, the device element may not be sufficient for registration even though the device element is not banal. This may also be the case if the device element underlines the meaning of the word, even if the device itself is complex. But how about adding further device elements? Or colors? And what about marks presently registered, but unacceptable if applied for today? Will their scope of protection be influenced and how would this be evaluated in conflict cases? Is the value of such trademarks increased or decreased? At this stage, a lot of questions are raised and practice is still developing.
National practice among the community member states also varies and may be different to OHIMs practice. This is the case when comparing Danish and OHIM practice and may be worth considering when applying for trademarks. When deciding which trademarks should be used as basis for oppositions, cancellation actions etc. such considerations are also essential.
We will follow case law closely as much more attention should be paid to trademarks which include device elements, and as it is now even more essential to have a discussion on risks, filing strategy and expectations of the scope of protection prior to filing a trademark application.
Henriette Vængesgaard Rasch, Attorney at Law
