DESCRIPTIVENESS AND LEGAL PROTECTION OF A TRADEMARK
A trademark is a sign that allows the recipient to distinguish the goods or services of one enterprise from the goods and services of another enterprise. It can take any form – it may contain a word, a drawing, a letter, a number, a color, it may constitute a spatial pattern or a sound. Importantly, not every mark can receive legal protection. The prerequisites for not granting the right to a trademark were distinguished by the legislator in Art. 129(1) Industrial Property Act. One of them is descriptiveness. We write about what the descriptiveness of the sign is about in the article below.
DESCRIPTION AS AN OBSTACLE TO OBTAINING LEGAL PROTECTION OF SIGNS
The concept of descriptiveness, which is a normatively undefined category, occurs only in legal language. Descriptive signs refer to a broadly defined set of features and properties of goods and services. According to L.P. Descriptiveness in the legal sense of Ramsey refers to signs that convey some information about a good or service.
The information function of the mark plays an important role for the recipient. So why is descriptiveness an obstacle to trademark registration?
No right of protection is granted for a designation that consists only of elements that can be used in trade to indicate, in particular, the type of goods, their origin, quality, quantity, value, destination, method of manufacture, composition, function or suitability.
This regulation concerns exclusivity of descriptiveness. According to the jurisprudence of the Court of Justice, it is the public interest that is the basis for the prohibition of registration of only descriptive signs. Its purpose is to prevent monopolization of marks and to ensure free access to them for other economic entities.
According to the Court of Appeal in Warsaw in the judgment of 23 August 2021, “the use of a descriptive mark should be fair, therefore it should not be aimed at confusing or even deceiving consumers as to the source of commercial origin of goods or services under the mark it has, or possibly contains element (fragment), of general informative nature ”.
Unfortunately, the legislator did not define the criteria for assessing descriptive markings. Apart from the aforementioned Art. 129(1) of the Industrial Property Act, we will not find any more references to this concept in the regulations. The method of assessing such marks has been developed by jurisprudence and doctrine. The rules of topicality, concreteness and direct descriptiveness were distinguished. On the other hand, European jurisprudence distinguishes the criteria of directness and specificity.
In order to correctly interpret the descriptive markings, attention should be paid to the references to value and intended use. These are not unambiguous concepts, so the perception of signs with such elements will depend on the consumer’s individual characteristics, social role and profession.
In the justification of the judgment of 23 August 2021, the Court of Appeal in Warsaw drew attention to the role of the recipient in the process of evaluating the descriptive markings „although the word “(…)” has a specific meaning in English, it does not prejudge its descriptive character in Polish. In such a case, the assessment depends primarily on the level of knowledge of a given foreign language in the country in which the entitled person seeks protection, taking into account the specific nature of the target group of goods and services for which the mark is used.” It is important to consider whether the meaning of a given word is recognizable from the point of view of an average consumer of a given good or service (cf. the judgment of the Court of 9 March 2006, C-421/04, Matratzen Concord AG, paragraph 26). This sentence was also confirmed in the judgment of August 10, 2021.
From the last two judgments of the Court of Appeal in Warsaw, an interesting conclusion can be drawn with regard to the level of knowledge of the foreign language among Polish recipients. In the first case (Judgment SA in Warsaw of 23/08/2021 VII AGa 1094/20), the Court decided that the word meaning in English one of the stages of the development of an insect would not be understandable to the Polish recipient of lice control preparations. The court notes that the word does not fall within the scope of the basic words and has not been adapted or disseminated to the Polish language in any way. In the second case (Judgment SA in Warsaw of October 8, 2021, VII AGa 843/20), concerning goods from the category of glasses and corrective lenses, the Court found that the English word “prime” refers to the Latin words “prima” and “primus” which, due to their use in Polish, will be understandable to the recipients of these goods. In principle, it is impossible to deny that every adult knows the meaning of the expressions “prima sort” or “prymus”. The word “prime”, as the Court considers, will therefore be understood by the recipients as a reference to the quality of the goods and thus will fulfill a descriptive function.
To sum up, in order to correctly assess the descriptive signs, one should take into account the target groups to which the goods or services bearing the contested signs are directed, their features and their interpretative capacity.
 W. Gierszewski Przeszkoda Opisowości w praktyce udzielania praw na znaki towarowe, 2022, s. 48
 L.P. Ramsey, Descriptive Trademarks and the First Amendment “Tennesse Law Review” 2003/70, s.1110
 Prawo Własności Przemysłowej T. VIIIB red. Osajda/Żelechowski 2021, wyd. 1/Ł. Żelechowski
 W. Gierszewski Przeszkoda Opisowości w praktyce udzielania praw na znaki towarowe, 2022, s. 26
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