Be careful with non-distinctive elements in case of trademark protection

One of the main requirements for the registration of trademarks is for the relevant sign to be distinctive and not descriptive of the goods or services mentioned in the application for protection.

Nevertheless, not distinctive signs can be protected if they are in combination with other, however, distinctive, elements such as text, colors, graphics, etc.

The problem with such trademarks is that they are weak when it comes to their not distinctive elements because such elements can be used by others in most cases.

One example of this issue is a dispute in Denmark between the following marks for class 5:

v

According to the Danish Court, both signs are not confusingly similar. The reason is that the words YUMMY and YUMMI have a meaning of something tasty, and pleasing in English, a language with which the Danes are familiar enough. The different letter I at the end of one of the signs cannot change this conclusion. Based on this, the Court considered these elements not distinctive for the assessment of the signs.

In regard to the other words included in the marks, GUMMI is understood as a short word for fruit gum in Danish and it is not distinctive too, while VITA means life, which creates a different conceptual meaning of the mark.

Because of this, the signs are considered dissimilar although the goods in class 5 are similar.

Source: Louise Thorning Ahle for Kluwer Trademark Blog.

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