Have you ever played with a lego piece? Practically everyone did and knows what it looks like and is able to visualize it quickly when recalling it. This is a very good example to explain a key concept in industrial property: acquired distinctiveness in trademarks.
This trademark (EUTM No. 50450), currently involved in a pending cancellation action, was registered as a trademark because it was able to demonstrate acquired distinctiveness through prolonged use over time. This continued use over time generated public recognition and, in turn, distinctiveness vis-à-vis the rest of the competitors.
But it was not the only one. The famous pine air freshener that we have all carried in our cars (EUTM No. 3071305) and the three-dimensional mark of the iconic Coca-Cola “Contour” bottle (USPTOTM No.1057884) managed to obtain the trademark grant, after proving and providing a series of evidence that showed that the public was capable of associating these marks with the companies that had launched them in the market.
So what is acquired distinctiveness in trademarks all about? It is a principle whereby signs initially considered generic, descriptive or non-distinctive may be registered as trademarks if, with the passage of time, they have managed to acquire distinctiveness and recognition by the public. These signs, therefore, acquire the capacity to identify the business origin of a product or service due to constant use in the market. And, therefore, they are apt to be considered trademarks.
How is acquired distinctiveness demonstrated?
Acquired distinctiveness, also known as “secondary meaning”, must be demonstrated before the corresponding intellectual property offices. To make a mark recognizable as distinctive through use, the key lies in the quality and quantity of evidence that must be submitted.
Evidence is the proof that must be offered to demonstrate that consumers associate a sign with a specific commercial origin. This evidence can be of various kinds, but what is essential is that it be clear and compelling.
Some of the evidence of use that can be provided to be positively evaluated are:
- Documentation attesting to the length of time the mark has been in use and presence in the market.
- Economic evidence to demonstrate significant participation in the relevant market.
- Recognition surveys and studies showing that a high percentage of consumers associate the sign with a specific company.
- Statements from trade associations, authorities or professionals in a particular sector.
- Media coverage of a product or the advertising investment that has been made in that sign.
Demonstrating the acquired distinctiveness of a trademark is a valuable resource to protect signs that, at first, do not meet the requirements to be registered as a trademark.
However, it is important to point out that it is not easy to demonstrate this distinctiveness before the competent offices and they are usually complex and demanding processes.
It is essential to have an effective and well-planned marketing strategy, as well as an exhaustive and quality collection of evidence, which makes it possible to substantiate the distinctiveness of those registered signs that, a priori, lack it.
If you have any questions in this regard, we remain at your disposal through the mail [email protected] or telephone 93 487 49 36.
