December 20, 2018

Descriptiveness in Brands: Marketing Rules Versus Trademark Rules

Choosing the Right Name

Choosing a name for a new product is often a source of concern for marketing managers at many companies.

When deciding to launch a new product on the market, the product's name must naturally be chosen, a key factor in commercial success.

Marketing rules dictate choosing a name that is appealing to consumers, easy to pronounce and remember, and that serves a more or less descriptive function, recalling the product's characteristics.

However, often, choosing a winning name based on marketing criteria does not correspond to the best choice based on the criteria imposed by trademark law.

In fact, Italian and EU trademark law explicitly requires a trademark to be distinctive. The primary function of a trademark is to identify a company's product and distinguish it from the products of other companies.

Article 13 of the Italian Civil Code Article 13.b of the Industrial Property Code (IPC) provides that "Signs devoid of any distinctive character may not be registered as trademarks, and in particular... those consisting exclusively of the generic names of products or services or of descriptive indications referring to them, such as signs which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the product or of rendering of the service, or other characteristics of the product or service." Similarly, at the Community level, Article 7.1(c) of the European Union Trademark Regulation states that "trademarks consisting exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, or other characteristics of the product are excluded from registration because they lack any distinctive character."

In general, a trademark must be thought of as a sign separate and distinct from the product, or as a sign that has no relation to the product. A trademark conveys product information only through advertising, not through its meaning.

The advertising campaign accompanying a product launch may convey descriptive characteristics of the product, which should not be reflected in the trademark.

Distinctiveness, in addition to being essential to the validity of a trademark, also plays a very important role in defining its "strength." A trademark with high distinctiveness and originality (having no connection to the product to which it refers) is defined as a "strong" trademark. Protection extends to all imitations that reproduce the "core" of the trademark, or its ideological core. Any trademark that allows the conceptual identity of the trademark to persist is considered an interference trademark.

Conversely, a trademark with little originality (because it is directly related to the product it distinguishes) is defined as "weak" and is essentially protected only against nearly identical reproductions of the trademark, as even slight modifications to the trademark preclude the possibility of confusion. Essentially, weak trademarks must coexist with third-party trademarks that use the same common descriptive root but differ in even slight variations.

Therefore, a trademark consisting of descriptive elements of the product may be invalid (if the trademark consists exclusively of the generic name of the product) or extremely weak because it lacks originality (as it is directly related to the product it distinguishes) and enjoys limited protection.

On the other hand, invented names are always considered "strong" and their distinctiveness will be greater, precisely because they have no connection to the product they distinguish.

When choosing a name, it is therefore always best to consider the following considerations: a slightly descriptive trademark may help market the product, but it is not strong and must coexist with trademarks that present even slight differences. A invented name may be more difficult to launch in an advertising campaign, but it certainly allows for a high level of protection.

When choosing the name of a new product to launch on the market, it is therefore important to consider trademark protection rules as well as marketing needs.

Gaia Salvatici

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