Why isn’t every trademark legally protected?
The Supreme Court of Lithuania recently examined the case of Ebro Foods S.A. against Eko Herba, UAB, and confirmed the old truth: a good trademark from a marketing point of view will not necessarily be a good trademark from a legal point of view.
The dispute arose as to whether a tea trademark consisting of several figurative elements and the words EKO HERBA was similar to the trademark consisting of several figurative elements and the word HERBA. The question was whether the word HERBA could determine the similarity of the trademarks.
The court stated that the trademarks are not similar because the word sign HERBA is a weak element to mark foodstuffs and therefore cannot determine the similarity of the trademarks when the other elements in the trademarks are different. Thus, both trademarks can coexist in the market.
This is a bad result for both companies. Consumers will call by the name of HERBA the goods of both companies, and the figurative elements of the trademarks may go unnoticed. Thus, a trademark will not perform its main function of distinguishing the goods of one manufacturer from those of another one.
It is often assumed that the more information a trademark has about the product and its composition or quality, the better the trade mark is. In such cases, words with a weak distinctive character are selected and emphasized, e.g. IMUNO, FRESHY.
However, this is not a good decision from a legal point of view, as there is a high probability that the protection of such a trademark will be weak and the owner will not be able to protect his interests against competitors.
Signs with a weak distinctive character in trademark dispute resolution practice are recognised the signs which allude to certain characteristics of goods (services) but do not directly describe them. These might be the already mentioned HERBA, IMUNO, FRESHY, ECO, etc.
Signs directly describing the characteristics of goods (services) are to be considered descriptive, i. e. having no distinctive character. These might be the words TEA, MILK, CHEESE, etc.
The strength of the distinctive character of a sign is assessed in the light of the specific goods in respect of which the trademark in opposition was registered. If HERBA was registered, for example, for footwear, the same word could be regarded as a highly distinctive sign.
The limits of the legal protection of a trademark also depend on the strength of the distinctive (identifying) function of the trademark. In the case of a so-called strong trademark (consisting of distinctive elements or a combination of elements), the assessment of the similarity of other marks will be stricter than in the case of trademarks consisting of less distinctive elements or a combination thereof.
The threshold of a certain degree of similarity which will be allowed to be exceeded by other trademarks will be different in the case of a ‘strong’ trademark and a ‘weak’ trademark while defending their rights. Descriptive elements which are devoid of any distinctive character or which have only a weak distinctive character are generally of lesser importance in the analysis of the similarity of the signs than elements which are more distinctive.
Verbal elements are generally recognized as having a greater impact on consumers’ perception, so even the most distinctive graphic elements used in a trademark are unlikely to improve the situation as in the present case, when both teas are essentially called HERBA, although the visual identity of the two trademarks is different. In summary, it can be observed that it is better to choose a word or a combination of words that does not have a semantic meaning that is directly related to the product. Only then will you be able to enjoy all the legal benefits of a trademark.