Is Your Brand Name Too "Helpful" For Trademark Protection? Navigating The New CP16

When business owners and brand experts brainstorm for a name or sign for a new product or service, their instinct is often to be as clear as possible. If you have written a book about gardening, you might want to call it 'All about Gardening'. If you have developed a yoga app, you might try to trademark the words 'Yoga Master'. While these names are great for search engines, they may create huge problems when trademark protection is sought.

EUIPO, together with the Member States' Intellectual Property Offices, have been developing common practice reports as regulatory standards in order to help guide applicants and examiners alike in their pursuits of trademark registration.

Common Practice 16 (CP16) is considered an important one as it is a return to the basics. One of the most fundamental principles of trademark registration is none other than descriptiveness. Descriptiveness can be found in many ways, e.g. by using wording or imaging alluding to the kind, quality, quantity, intended purpose, value of the services and/or products. However, CP16 refers to the last part of Article 4(1)c of the Trademark Directive which refers to the 'other characteristics', and other characteristics is often interpreted to mean the subject matter.

CP16 notes that, while no definition of the notion of subject matter in EU case-law can be found, when assessing whether a sign may be describing the subject matter of the goods and/or services at issue, EU case-law employs the notion of 'subject matter' to refer to the:

• key element,
• content,
• area,
• activity,
• field, or
• theme

For example, the sign 'WINE' will not be seen as an indication of commercial origin for goods in 'Class 9: Downloadable mobile applications' but rather as a description of a characteristic of the goods. The reason is that the relevant public, when confronted with the sign 'WINE' affixed to a mobile application, will immediately perceive it as a description of the app's subject matter (i.e. an app that provides information about different types of wine, wine pairings, or wine reviews). Thus, in this case, 'WINE' is considered an inherent characteristic of the goods at issue.

The test in simple terms is for a consumer to not be able to draw a direct link when seeing the mark for what the product is all about but rather link the mark with the specific company who made it.

A brand name that is too "helpful" is going to create problems and this is exactly why it is crucial that legal counsel is involved early in the creation and selection process.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.