The descriptive character of a trademark as a ground of refusal for community trade mark registration

Michał Mazurek - doktor nauk prawnych, Katedra Prawa Unii Europejskiej Wydziału Prawa i Administracji Uniwersytet Marii Curie-Skłodowskiej; radca prawny.This commentary concerns one of the most practical issues in the Community trademark system. First of all, it highlights the general rules for the evaluation of the mark’s descriptiveness applied by OHIM and EU courts. Besides the territorial and temporal aspects of that evaluation and view of the relevant customer, the appropriate approach is accentuated with regard to the “direct and specific relationship” between the mark and the goods or services that it represents. It is precisely that relationship which provides the necessary condition for its descriptiveness. Secondly, the commentary characterizes the different categories of descriptive trademarks. It can be derived from extensive EU case-law that not only wordedmarksmay reasonably be qualified as descriptive. Such a qualification is also possible with regard to graphical, three-dimensional, combined and even non-conventional imagery. Thirdly, the commentary addresses the problems concerning acquired distinctiveness. It is noted that some inherently descriptive signs may never acquire distinctiveness through use due to the specific circumstances involved. Generally the commentary provides practical guidelines for the evaluation of a mark’s distinctiveness, which may be useful also in the field of Polish trade mark law.Uniwersytet Marii Curie-Skłodowskiej179-20