Sometimes the brand-building process and protection of trademarks could create tension between the marketing experts and intellectual property specialists.
The reason for this is the fact that the former want, in some cases, their brand to have a particular meaning associating with the relevant goods and services. Although this sounds tempting it can create a lot of problems when it comes to trademark registration.
One example in that regard is a case before the General Court of the European Union Case T‑48/20, Sahaj Marg Spirituality Foundation v EUIPO.
This case concerns an international trademark for HEARTFULNESS, designating the EU, in the following classes:
- Class 16: ‘Printed matter; instructional and teaching materials’;
- Class 41: ‘Education; providing of training and cultural activities’;
- Class 45: ‘Consultancy services in spirituality’.
The EUIPO refused registration of this mark based on absolute grounds – lack of distinctive character and descriptiveness. According to the Office the term HEARTFULNESS describes a particular meditation technique which means that consumers will perceive its meaning directly in relation to the above goods and services. The Board of Appeal upheld this position too.
The applicant appealed arguing that HEARTFULNESS was newly created word by the company in order to describe a particular relaxation and meditation technique. The purpose was consumers to link this technique with the applicant only.
The Court dismissed the appeal. The fact that one term is newly created doesn’t mean that it can be registered as a trademark automatically. If the term describes the goods and services which it will be used for, it cannot serve as a source of trade origin.
According to the Court, in the case at hand HEARTFULNESS is a descriptive term for a relaxation and meditation technique. An additional argument for this was a book titled The Heartfulness Way.
All in all this means that if you create a term that speaks for the goods and services branded with it, it is highly likely this term not to be registered as a trademark.