Trademarks and distinctive character: Huawei application nipped in the bud

In 2018, Chinese telecoms company Huawei filed an EU trademark application for the word mark ‘Freebuds’ covering headsets and earphones. EUIPO refused the application due to its lack of distinctive character. That ruling has recently been upheld by EUIPO’s Board of Appeal. Frouke Hekker outlines the decision.

As we have covered previously, a sign, such as a brand name or logo, must fulfil certain criteria in order to be registrable as a trademark. In particular, it must have ‘distinctive’ character in order to enable the relevant public to distinguish the marked goods and services as belonging to a specific undertaking, as opposed to those of other undertakings. If a sign does not fulfil this requirement a trademark application will be refused or, if a trademark right has been granted, the registration can be challenged and potentially revoked.

A question of class

In the application, the trademark applicant must specify for which goods and services the trademark is (or will be) used. This is done on the basis of the 'Nice Classification', a list describing goods and services that contains 45 classes (34 classes for goods and 11 classes for services). The goods and services description should be as clear and precise as possible to determine the scope of protection of the trademark.The requirement of distinctiveness is not met if the (dominant) word element for which protection is sought is descriptive for the goods and services in question. Therefore, when assessing the distinctive character it is relevant for which goods and services the mark has been applied to cover.

It is here that the ‘Freebuds’ application fell short. It was refused as a trademark by EUIPO (in brief) because of (in summary) the non-distinctive and descriptive character of the terms 'free' and 'buds'. On appeal, EUIPO’s Board of Appeal has ruled in line with the examiner’s decision.

Points of note

Firstly, the Board of Appeal explained in the ruling that descriptive and non-distinctive signs are excluded from registration because of ‘public interest’. In other words, such signs must be free to use and must not be monopolised for certain products and/or services by means of an exclusive trademark right. In this case, the relevant products are mainly intended for a large audience and are aimed at the consumer who has an average level of attention.

Next, the Board of Appeal confirmed the examiner's findings that the words 'free' and 'buds' are common words. ‘Free' is, if used as an adjective, understood by the relevant public as doing something freely; without restrictions or barriers. ‘Buds' literally means a bud of a tree or plant from which a flower or leaf grows, but is often used as a synonym for earplugs.

The Board of Appeal thus comes to the conclusion: "In the present case, the sign ‘FreeBuds’ is descriptive in relation to the relevant goods, i.e. ‘headsets; earphones’ in Class 9. In particular, it will be immediately and without any further reflexion understood by the relevant public as a reference to the kind and characteristics of the relevant goods namely to the fact that the contested goods are earphones (or headsets) in the form of earbuds that allow listening to music/radio/telephone communications/etc. freely, i.e., without constraints or barriers."

Overcoming limitations in distinctive character

If a sign is initially deemed unsuitable to be registered as a trademark, it could still be eligible for trademark protection at a later date if it acquires distinctiveness through use. ‘Acquired distinctiveness’ can apply where a trademark has become widely recognised through long-term or intensive use; in other words, when the sign has begun to function as a distinguishing sign, and thus as a trademark. That said, it is generally advisable to begin with a brand name or logo that is strong enough (and available) to be registered on first application.  

Signs that have a limited distinctive character may be strengthened by combining them with a distinctive element (e.g. a composite mark including a word and figurative element). However, it is important to also note that the resulting trademark right will then only cover the trademark in totality, rather than the elements individually.

For additional information and guidance on selecting the right trademark for your business or brand, please speak to your Novagraaf attorney or contact us below.

Frouke Hekker works at Novagraaf’s Competence Centre. She is based in Amsterdam.