Like most legal systems governing trademark registration, the Slovenian Industrial Property Act (ZIL-1) does not allow the registration of signs that merely describe products or services. Such signs are better known as “generic signs”. Can commonly used words be trademarks? Do we always need a great deal of imagination to register a trademark?
The absolute grounds for refusal of a trademark are regulated by Article 43 of ZIL-1. These are grounds on the basis of which the office refuses registration ex officio, even if no one files an opposition. ZIL-1 prohibits the registration of generic signs in point b of the first paragraph of Article 43, according to which a sign may not be registered as a trademark if it is “devoid of any distinctive character”.
The purpose of this ground for refusal is to protect the general interest by preventing the registration as trademarks of signs that cannot perform the essential function of a trademark. The essence of a trademark is to ensure that the final consumer or user can determine the origin of goods or services on the basis of the mark, and can distinguish those goods or services, without the possibility of confusion, from goods or services of another origin.
The office will therefore not recognise a trademark if, in relation to the goods or services applied for, the word sign is merely descriptive in nature. In such a case, the consumer would understand it only as a description, information, or a literal description of the services or goods or their purpose. Average consumers do not perceive such descriptive words as a trademark or distinctive name intended to designate specific goods or services, but merely as an ordinary concept connected with certain services and goods.
In such cases, because the consumer cannot distinguish when a word or text is being used as “general information” and when it is being used as a “trademark”, such a word or text is not suitable for distinguishing goods or services and cannot be registered as a trademark. For example, the word sign APPLE cannot be registered for the sale of apples. To determine whether a trademark is descriptive, it is necessary to assess whether the relevant public would make a sufficiently direct and specific connection between the term and the goods and services for which the trademark was applied for.
Conversely, a certain commonly used word can be registered as a trademark if the word sign is not descriptive in relation to the goods or service it is intended to identify. For example, the word sign APPLE can be used for technology products. The word apple says nothing about the products themselves.
With a little imagination, you can therefore register a commonly used word as a trademark, but only if you register it for goods or services that are not connected with that particular word.
If you would like to learn more about the possibility of registering a particular sign, write to us at info@lemur.legal.