Trademarks that are descriptive in languages other than English and in minority languages in the EU: Stuck between Babel and Babylon

Hamam, R.
February 2012

Executive Summary

The dual nature of the trademark system in the European Union, standing upon the two pillars of the 1989 Trademark Directive (TMD) and the 1995 Community Trademark Regulation (CTMR), has resulted in incoherencies in the treatment of merely descriptive and generic marks in languages other than English and in minority languages. This is largely attributed to the differences in legal interpretations and approaches adopted by the national trademark offices, the European Court of Justice (ECJ), and the Office for Harmonization in the Internal Market (OHIM) in the examination of such marks. Allowing the registration of a merely descriptive and generic trademark for use by one trader within the member states of such a borderless union as the EU inevitably facilitates monopolistic situations to the detriment of competitors and the internal market as a whole, thereby resulting in negative implications on free movement of goods and also freedom to provide services between Member States. Given that the TMD and the CTMR ultimately share the same long-term objective and foundational principles, however, there is a need for real harmonisation in absolute grounds of refusal, which in turn calls for an alternative framework, such as one resembling the doctrine of foreign equivalents adopted in the United States, amongst other possible options of alignment and cooperation between national trademark offices and the system of Community trademarks.