Descriptive trademarks - how to register them?


Descriptive trademarks (general information) are the most problematic when registering. Marketing is most effective when it immediately communicates what the advertised product is for. Unfortunately, the most obvious things are not always the simplest. It is almost impossible to register a descriptive trademark that directly points to your product, as it is not always possible to claim ideas that will best reflect your product.

Why is it worth registering trademarks?

The most valuable products are one of a kind - those that can be monopolized and that can be protected by registration with the Patent Office or EUIPO (European Union Intellectual Property Office).

What can be registered?

There are a number of trademark categories that we distinguish upon registration.

Types of trademarks

  1. word marks:
    a) fancy words
    b) names and surnames
    c) acronyms
    d) slogans

  2. graphic signs:
    a) pictorial signs
    b) drawing compositions
    c) color compositions

  3. word and figurative signs:
    (a) signs consisting of a combination of word and figurative marks

  4. spatial signs:
    (a) three-dimensional forms of goods
    b) three-dimensional forms of packaging

  5. color

  6. sound signs

  7. taste signs

Conditions to be met by a trademark

In order to be able to protect a trademark, it must meet a number of requirements. The most important thing is that it should be able to distinguish the goods or services of one entrepreneur from the same type of goods or services of another entrepreneur. So it must be distinguishable.

Descriptive trademarks

The main function of a trademark is to indicate the origin of a good / service. Descriptive trademarks do not fulfill this function. Therefore, they practically cannot be trademarks.

Example 1.

It would be impossible to register this type of trade mark as the name is not distinctive. He immediately indicates that we are dealing with ophthalmic services provided 24 hours a day.

Descriptive character (general information)

A descriptive mark is a mark that indicates the type / subject of a service in words, therefore such markings are not registered.

Additionally, they do not meet 2 requirements:

  1. they are not distinctive

  2. some characters should be free for everyone

Pursuant to Art. 1291 section 1 point 3 of the Industrial Property Law

No right of protection is granted for a designation [...] consisting solely of elements that can be used in trade to indicate in particular the type of goods, their origin, quality, quantity, value, purpose, method of production, composition, function or usefulness.

A descriptive trademark is, therefore, e.g. home ”would be breaking the law.

How to bypass the ban?

It is possible to register a figurative mark or a word mark, but suggestive or allusive.

A figurative word mark is a combination of a word and a graphic design that unambiguously marks a given product. Therefore, by creating a word-figurative mark, e.g. of bread, and adding specific graphics to the logo - even grains, it will be possible to register this type of mark at the patent office.

Word marks that are allusive, suggestive, indirectly indicating the product can also be registered. The associations are to guide the recipient to the features of the goods or services being offered. Such marks suggest certain characteristics of goods and services.

You can also try to combine several words into one and achieve the same effect.