Registration of a trade mark can provide valuable exclusivity and a significant commercial advantage to the trade mark owner. Because of this, trade mark law requires that trade marks are distinctive, so that they can effectively indicate the origin of the trade mark owner's goods or services. A trade mark which is merely descriptive of the goods and services it seeks to protect would not be registrable. For example, "APPLE" is distinctive for computers, but it is not distinctive for fruit.
But just how distinctive does a trade mark have to be? Registrable trade marks can contain descriptive elements. The addition of images and other elements can make a trade mark distinctive enough in its entirety and take away from the purely descriptive meaning of any of its elements. But it will always be a matter of the degree to which the descriptive meaning is diminished. Selecting a trade mark can become a tricky exercise, especially if it contains descriptive words or images.
In a recent case that has seen two rounds of appeal * the General Court has held that the descriptive meaning of "BASMATI" and "RICE" in a logo registered as a European Union trade mark, in relation to rice and various rice based products, was not lessened by the presence of the image of a man wearing a turban and other decorative features- shown in the logo below.
It was agreed that "Rice" was descriptive of "rice and rice based dishes"; and "Basmati" was a generic term well known to the English speaking European public as designating a variety of rice with geographical origins in India. The image of the turbaned man suggested an inhabitant of an oriental country. The General Court held that this image reinforced the descriptive meaning of Basmati as a variety of rice coming from India, since a large number of the consumers would recognise that the headdress is typically worn in India. The word "SIR" and the coloured decorative elements were all considered non-distinctive. The presentation of the words around an image was not unusual and the words were still clearly visible compared to the other aspects of the logo. None of the non-word elements took away from the clear descriptive message of "BASMATI" and "RICE" in the context of the registered goods.
The challenge was mounted by Agricultural and Processed Food Products Export Development Authority (APEDA), established in India, which is unsurprisingly keen to maintain the significance of Basmati as indicating a very specific and superior variety of fragrant rice, grown in a particular region. Basmati is often the rice of choice for fine Indian cuisine. APEDA has also registered Basmati as a Geographical Indication in India but that was considered irrelevant to the case – the geographical Indication was registered after the application for registration of the challenged trade mark was filed and it could not be proved that the relevant consumers associate the word Basmati with a reputed geographical indication. The challenge did succeed however on the basis that the words were descriptive of the products and despite being a complex logo the overall impression was descriptive.
The strongest trade marks are those that are entirely fanciful, but often for understandable commercial reasons owners like to have the mark as closely aligned to the product as possible to indicate what the product is. It is useful to carefully consider any overriding meaning conveyed by words and images on their own or in a logo and assess whether a mark is suitable for registration for the particular products or services for which registration is sought. Pre-filing advice may be well worth the value when compared to the costs of seeing through contentious proceedings.