Distinctive character

Distinctive character is the essential condition of validity of a trade mark. A sign is distinctive when it is capable of identifying the goods or services of one undertaking and of distinguishing them from those of other undertakings in the eyes of the relevant public. The condition is laid down in Article L. 711-2 of the French Intellectual Property Code and in the EU Trade Mark Regulation. Distinctiveness is assessed by reference to the designated goods or services and to the perception of the average consumer of those goods.

Signs devoid of distinctive character

First, descriptive signs, which designate a characteristic of the goods or services, such as their kind, quality, quantity, intended purpose, value or geographical origin. Second, generic or customary signs, which have become the common name of the product in the language or in trade practice. Third, shapes or other characteristics dictated by the nature of the goods, necessary to obtain a technical result or which give the goods substantial value. These exclusions ensure that necessary terms and shapes remain available to all traders.

Acquiring and losing distinctiveness

A sign that is initially descriptive or banal may acquire distinctive character through use, where the public has come to perceive it as an indication of origin. Such acquisition is proved by surveys, the scale and duration of use, advertising investment and market share. Conversely, a mark may lose its distinctive character and face revocation where, through the conduct of its owner, it has become the common name of the product. The case law of the EUIPO and of the Court of Justice of the European Union has clarified these mechanisms, in particular for shape marks, colour marks and slogans.

Key points

In practice, distinctive character also determines the scope of protection: a highly distinctive mark enjoys broad protection against imitations, while a weakly distinctive mark can only prohibit very close reproductions. Choosing an arbitrary or fanciful sign is therefore a legal investment. The firm acts in cancellation and trade mark infringement proceedings where distinctiveness is in issue, as part of its intellectual property practice.