Will DocuSign prevail against Signadoc?

As you’ve probably already guessed, DocuSign is a handy tool for signing documents. It’s a perfect name in marketing terms, as no further explanation of what the product does is required, but in terms of trademark law it is more problematic.

Is it not perhaps too descriptive? And if the owner does manage to register this trademark, won’t it have a very limited scope of protection?

Both these questions were explored recently when DocuSign filed an opposition against Signadoc. Even though the European Trademarks Office had accepted the word trademark DocuSign, the verdict of the Opposition Department at the time was that the name was rather descriptive, and although they did not go as far as to say that the name could not be claimed, this does mean that its scope of protection is limited.

The next question is whether this limited protection is sufficient to stop Signadoc in its tracks. The answer is yes, despite the fact that the older trademark has only limited protection. The trademarks look and sound similar and conceptually they are extremely similar. Because both trademarks are used for exactly the same services it is impossible to exclude the risk that they will be confused with each other. The outcome would undoubtedly have been different had Signadoc taken just a little more distance.