Fame through simplicity

A Dutch insurance company regularly runs television commercials saying "Stay ordinary for long enough and one day you will be special".

There is certainly a kernel of truth to this saying. Unfortunately, it does not tend to apply to trademarks that are inherently lacking in distinctiveness. These are often word marks that spell out exactly what a company does. Often, this clear messaging is a big contributing factor to their success. But here’s the irony ─ once a trademark like this becomes widely-known, it often runs into problems related to trademark law as it is extremely difficult to protect.

Take, for example, ILOVEPDF, a website that makes it easy to split, compress, merge and edit PDFs. It's certainly very handy. But is it a distinctive trademark? The European Trademark Office didn't think so, both first time round and on appeal. ILOVEPDF simply states that you love something and therefore lacks any distinctive character as a trademark.

Another example is TICKETSWAP, a website where you can sell your concert ticket or buy a ticket for concerts that have sold out. Once again, TICKETSWAP is not a trademark and the application to register it as a European trademark was rejected on the grounds that it merely says what it does.  

One could argue that the widespread popularity of these companies is reason enough to accept their trademarks. It’s also true that a descriptive mark can become a trademark as it acquired distinctiveness through use.. Companies filing for a European trademark, however, have to prove that this is the case in many member states. This is a daunting task, but hopefully ILOVEPDF and TICKETSWAP are now famous enough to rise to this challenge. Perhaps this type of trademark could work under the motto "Become famous enough and one day you will be special".

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.