Descriptiveness

Descriptiveness is the absolute ground for refusal that applies to a trade mark consisting exclusively of signs or indications which may serve, in trade, to designate a characteristic of the goods or services, in particular the kind, quality, quantity, intended purpose, value, geographical origin or time of production. It is provided for in Article L. 711-2 of the French Intellectual Property Code, which transposes Article 4 of Directive (EU) 2015/2436, and in Article 7 of Regulation (EU) 2017/1001 for the EU trade mark.

Assessment of descriptiveness

A sign is descriptive where, for the relevant public, it has a sufficiently direct and specific relationship with the goods or services concerned to enable that public to perceive immediately, and without further thought, a description of those goods or of one of their characteristics. The Court of Justice of the European Union holds that refusal is required if at least one of the possible meanings of the sign designates a characteristic of the goods, and that it is irrelevant whether more usual terms exist or whether the sign is not yet actually used descriptively. The assessment is made in relation to each of the goods or services designated.

Neologisms, foreign words and geographical names

A neologism made up of descriptive terms remains descriptive where the combination does not create an impression sufficiently far removed from that produced by the mere juxtaposition of its elements. Only an unusual combination, by its syntax or by the new meaning it produces, escapes refusal. A foreign word is assessed according to the understanding of the relevant public in France or in the relevant part of the Union, so that common English terms are often held to be descriptive, whereas a word from a little-known language is not. A geographical name is descriptive where it designates a place currently associated with the goods by the public or reasonably likely to be so in future.

Effects and remedies

A descriptive sign is refused registration and, if it has been registered, declared invalid at the request of any interested person, without any time limit. It may nonetheless be registered or saved from invalidity if it has acquired distinctiveness through use, which requires proof that the public has come to perceive it as an indication of origin. Adding figurative elements or an arbitrary term makes it possible to register a semi-figurative mark, but protection does not then extend to the descriptive term taken in isolation. Finally, a registered trade mark does not entitle its owner to prohibit third parties from making descriptive use of the sign in accordance with honest practices, a limit that reduces the value of marks close to description. Lack of distinctive character and descriptiveness overlap to a large extent, the latter being a particular instance of the former.

Key points

A sign that designates a characteristic of the goods or services, directly and in at least one of its meanings, cannot constitute a trade mark, save where distinctiveness has been acquired through use. Transparent neologisms, common English words and place names associated with the goods are the most frequent cases of refusal. Prefer an arbitrary sign, test each term against each of the goods designated and, for an evocative sign, bear in mind that it will confer only narrow protection.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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