This post was first published on 8th September, 2014.
In continuation to the earlier post where we covered the US approach towards protection of descriptive marks, in the current post, we will be analyzing the circumstances in which descriptive marks can be protected in the EU.
The EU position towards descriptive marks is clearly stated under Article 7(1)(c) of the Council Regulation (EC) No. 207/2009, which is couched in the similar language as that of the provision in the Indian Trademarks Act 1999, talking about the same. As per this provision, signs which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the good or service, cannot be registered as Community trademarks.
Descriptive marks can be protected in the EU only when they have acquired distinctiveness through use or as per the fair use defense provided in the Regulation. Under Art. 7(3) of the Regulation, a descriptive trademark and even a generic trademark may be registered as a Community trademark if the sign has become distinctive in relation to the goods and services for which registration is requested in consequence of the use which has been made of it by the applicant. As per the Fair Use defense, the rights conferred by the trademark do not entitle the proprietor to prohibit a third party to use descriptive marks, provided the third party uses them in accordance with honest practices in industrial or commercial matters. These are the circumstances in which EU law permits registration of descriptive marks.
In the final part of this blog series, we shall conclude this discussion with an examination into the Indian position on protection of descriptive trademarks.