Being truly distinctive
McDonald’s in the desert (AI)
From a marketing perspective, standing out from the competition is important.
Being distinctive means that you can leave an impression and potential clients will notice you. Distinctiveness is also an essential element in trademark law because a trademark must be distinctive to be accepted by trademark authorities. If the average consumer is not able to recognise a trademark as originating from a specific company, it cannot be considered a trademark and the application will be rejected.
Trademark and marketing agency JKR and market-research agency Ipsos recently conducted a study on the distinctiveness of the logos, slogans, mascots and colours of more than 500 trademarks. This study identifies two crucial aspects of a trademark element: the extent to which it is unique and the extent to which it is well-known (reputation). Uniqueness is influenced by branding, and reputation depends on marketing. You can’t have one without the other, and investing in both is the best way to achieve distinctive trademark elements. Research has shown that only 15% of trademark elements are actually distinctive, and it has been estimated that 85% of trademarks worldwide will not be considered distinctive.
Uniqueness and reputation. To what extent do these aspects play a role for distinctiveness in trademark law? Under trademark law, the distinctiveness of a trademark is assessed in the light of the products or services for which the application was filed. A descriptive trademark is generally not regarded as distinctive. Reference and fantasy words, however, are seen as distinctive. This shows that the degree of uniqueness does play a role in trademark law. Although being widely known is not a requirement for registering a trademark, it can be seen as an additional criterion when the trademark is descriptive and therefore not in itself sufficiently unique. It is possible for a descriptive trademark to acquire a distinctive character through use if the relevant public has come to regard the word as a trademark (conversely, it is possible for a trademark to lose its distinctive character and become a generic name).
In the above-mentioned study, the golden ‘M’ is cited as an extremely distinctive trademark, as it is immediately associated with McDonald’s. It is also very distinctive from a legal point of view. This distinctiveness is not inherent in its nature; while a logo consisting of a yellow M may be distinctive, it does not immediately stand out and is only ‘unique’ to a limited extent. Thanks to intensive use and targeted marketing, however, this trademark has become famous and even more distinctive. In trademark law, almost all trademark elements can acquire distinctiveness through intensive use, but an intrinsically distinctive element will offer greater protection.
At the end of the day, the trademark attorney and marketing manager both want the same thing: to protect and market a distinctive trademark. Go for originality, then you’ll be on the right track!
Author: Arnaud Bos
Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.