Legal Updates

A descriptive mark can be registered provided that it acquired a distinguishable character through long term use

February 16, 2022

A company sought to list the words "Chef Line" as a trademark.

The Court held that while the mark has no distinguishing character of its own, it has an acquired distinguishability through use and therefore should be registered as a trademark. In order for a trademark to be eligible for registration it must be shown to distinguish between the products of the trademark owner and the products of others. When a mark consists of elements that are widely used for marking or describing products of the applicant's product type, or elements directly related to the essence or quality of those products, it will not be eligible for registration, as no specific business owner should be allowed to own a word which is commonly used in a certain language or field. The distinctive nature of a mark is examined in relation to the goods or services for which the registration is requested and the fact that the mark may have different meanings does not necessarily make it eligible for registration. However, the fact that a mark is descriptive does not necessarily mean that it cannot be registered, insofar as the mark has acquired a distinctive character due to use, taking into account the duration of use of the mark, the manner and degree of publicity it receives and the means invested in establishing it among the public. Here, while the mark applied for is descriptive, and lacks distinguishable character, while being directly related to the products and goods for which registration was requested, the company has shown that the mark has been in use for over a decade, is a dominant component in its branding and has penetrated the consciousness of the company's consumers so that it has acquired a distinguishable character that allows it to be accepted for registration.