In order to function as a trademark it must be capable of distinguishing one company’s goods or services from those of another. Essentially this means that the trademark must allow the average consumer to recognize the commercial origin of the goods or services.
In order to explain this more fully I will make use of two examples which illustrate how these principles work in practice.
The first concerns a UK trademark application for BRITPOP. This trademark was recently applied for by Blur bassist, Alex James. He applied to protect it for use in relation to alcoholic and non-alcoholic beverages. By way of background the term Britpop was coined in the early 1990s to describe the UK music scene at the time, which was dominated by a rivalry between Blur and Oasis. The relevance of this will become clear in due course.
At the time of writing this article the BRITPOP trademark application had been examined and accepted by the trademark office. This comes as no surprise and BRITPOP is a highly distinctive name when used in relation to beverages. It is an invented term with absolutely no meaning as far as drinks are concerned.
However, what if Alex James had applied to register the trademark for use in relation to musical recordings and entertainment services? Would the mark have been accepted? The answer is probably not as BRITPOP is likely to be considered a descriptive term used to describe the UK music scene in the 1990’s. BRITPOP is therefore distinctive and acceptable in relation to beverages but not in relation to music. On a similar note I see that a UK trademark application for ‘Supersonic 70’s’ was refused in relation to entertainment and music on the basis that is descriptive of a musical era. It was therefore unable to function as a trademark.
The second example I will consider concerns an EU trademark application (CTM) by German toymaker Steiff. They applied to register a trademark for a button attached to the ear of a soft toy. Venerable toymaker Steiff, which started producing teddy bears in the late 19th Century, sought better protection from competitors that sell cheaper soft toys with similar ear buttons. However, its application to register the button as a trademark was turned down by Europe’s Community Trade Office (OHIM) in 2010. The EU’s General Court recently considered the matter and confirmed the OHIM’s decision that the mark (i.e. button on an ear) was not capable of distinguishing and could not function as a trademark. The court in Luxembourg also said in a statement that buttons and small labels constituted normal component parts of soft toys. Their fixation to the ear would be perceived as a decorative or functional element which could not be regarded as exceptional, it added.
The mere existence of a button on the ear of a soft toy is therefore, in itself, not capable of functioning as a trademark. It is the trademark ‘Steiff’ that distinguishes the venerable toymakers products from those of its competitors and not the button itself.