The Distinctive Feature of Trademark. What Is It?

Authors: Kristina Vilkiene, Assistant Attorney-at-Law in METIDA, Inga Lukauskienean Associated Partner, an Attorney-at-Law and a Patent Attorney in METIDA

paveiksliukas4Let us consider that you created a trademark. A trademark that you think is wicked. You filed an application to register it and suddenly it turns out that your intentions about your trademark do not coincide with expert’s of The State Patent Bureau of the Republic of Lithuania opinion. Unfortunately, sometimes this happens.

The reason behind this is that according to the expert the mark you filed to register cannot be registered because it does not meet one or a few absolute requirements stated in the Law on Trade Marks of the Republic of Lithuania. For example, it does not have a distinctive character. An increasing number of trademark applicants are facing this situation, for the marks provided to be registered as trademarks consist of common words of a certain language.

One of these examples is FIAT AUTO S.p.A. (Italy) trademark ECODRIVE. The State Patent Bureau of the Republic of Lithuania after analysing the application to provide protection for this international registration in Lithuania decided that the mark does not have a distinctive character and it consists exclusively of symbols or marks, that can be used on the market as an indicators of goods’ and (or) services’ kind, quality, quantity, purpose, value, geographical origin, the time of production of the goods or of rendering of the service and their other characteristics.

The trademark ECODRIVE was registered for class 12 of Nice Classification for the following goods: “vehicles and their parts; vehicle parts with electrical and (or) a thermal propellers and their parts; engines for the over ground vehicles, engines for the over ground vehicles with electrical and (or) thermal propellers”.

Motivated argumentation and additional evidence sometimes help change the expert’s decision, because the trademark registration procedure allows to file an application requesting the expert to conduct another examination and reconsider his decision not to register the trademark.

In ECODRIVE trademark’s case in the application for another examination it was stated that the trademark:

– describes the goods neither verbally, nor visually;

– does not consist only of elementary geometric figures and lines;

– consists of more than two letters/numbers;

– does not consist only of one colour;

– does not consist of the two colours or the two shades of the same colour;

– does not consist of only conventionally  acknowledged common words, names or marks;

– does not consist of only words of descriptive origin and the information about the product or its production;

In other words, this mark does not meet any of the criteria which would lend evidence to the statement that the mark does not to have a distinctive character.

Both in national and international court practice the universally acknowledged principle proposes that when the conformity to meet the absolute requirements stated in the law of  the marks that are filed to be registered as trademarks is considered, it is necessary to evaluate not only its consisting elements, but also the ratio of a particular mark with goods and (or) services which it is registered to mark.

Neither the compound of words ECO and DRIVE in English, nor their glossary in Lithuanian  “ecologic  drive, steering”  are the common terms for those 12 class’ goods which are indicated in the international registration.

On the website www.ecodrive.org the column “What is ecodrive?” indicates that it is “a way of driving which decreases the use of fuel, the emission of gas, which evokes the greenhouse effect, and the rate of accidents. Ecodriving is about the way of driving  that is appropriate for the modern engine technologies: quick, smooth and safe driving methods which determine the saving of fuel 5-10% on average. Ecodriving proposes a benefit for the drivers of cars, vans, lorries and buses: the decrease of expenses and a small number of accidents as well as the decrease of gas emission and noise level. A few of European countries have implemented the successful ecodriving programmes”.

Hence, the notion of ecodriving is associated not with a particular car or its integrate part which could be assigned to the indicated goods of class 12 in the ECODRIVE international registration, but with a specific way of driving, which decreases the use of fuel, air pollution, the noise level, and which teaches a safe driving. This indicates that ecodriving, or ECODRIVE, after also considering other circumstances of a particular application or a registration, could perhaps be evaluated as a mark which does not have a distinctive character or as describing services of class 41 “education, teaching”, as class 41 apart from other services encompasses the services of “persons or companies who provide the development of human intellectual abilities”, and thus also including services of teaching how to drive. This conclusion has been confirmed by other sources too in which a concept of ecodriving is found. In all of them it is emphasized that ecodriving is a rational style of driving which is not dependent on a particular car or its technical qualities.

Meanwhile, even though in the international registration the indicated goods of class 12 are  associated with driving as much as they are an object of driving, the nature of mentioned goods and  the carried out actions is completely different: a particular vehicle (or its part) and the method of vehicle handling which brings an aspired effect. And this effect – ecodriving – has been mentioned to be achieved not with a specific car or its integrate parts, but by the way the car is run. This indicates that the same car can have or not have the aspired ecodriving effect depending on the way it is driven.

Moreover, neither a common driver, nor a specialist of a particular area whilst talking about goods of class 12  such as “vehicles and their parts; vehicles with electric and (or) thermal propellers and their parts; engines for over ground vehicle, engines for over ground vehicles with electric and (or) thermal propellers” will directly associate them with the term ECODRIVE  and will use it to describe the indicated goods of class 12. Even if the abbreviation eco in some cases used in a compound with another technical term, e.g., eko auto, could be considered as indicating appropriate characteristics of goods, the very same abbreviation compounded with drive would not indicate any characteristics, since, as it has been mentioned before, it does not describe a particular car or its integrate part, but rather the way of handling a vehicle.

The discussed mark neither directly nor indirectly indicates the kind, quantity, quality, purpose, value, geographic origin, the production date and method of the goods of class 12 indicated in the registration. Also, it does not indicate any other previously mentioned characteristics of goods of class 12. Even though both words that are in the mark (their abbreviations) have appropriate semantics, the general meaning of this compounded word is not of a descriptive nature in the international registration for the indicated goods of class 12. Thereby, the trademark does not meet the absolute requirements provided in the legal acts.

The expert of The State Patent Bureau of the Republic of Lithuania after conducting another examination changed his primary decision and made a new one by ensuring the protection of the international trademark ECODRIVE registration in Lithuania.

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