TRADEMARK IRREGISTRABILITY

Oscar David Reyes

To determine the generic condition of a sign, the jurisprudence and the doctrine suggest asking ¿what is the product in front of us? If the answer corresponds to the same word aimed to be trademark, we are in face of a generic denomination, non-registrable. The interest of the legislator when preventing the registration of generic trademarks is to avoid the monopoly over terms that need to be used by all concurrent in the specific market, because they serve to refer to any product of the same kind.

DESCRIPTIVE CONDITION: Regarding trademarks terms, are descriptive the words evoking a characteristic or quality of the product to be protected in a direct way. Consequently, trademark “sweet” would not be registrable to identify candies. Likewise, the sign “fast” would not be registrable to identify racecars. The community jurisprudence exposes: “The sign constituted only by words that indeed indicate an essential quality of the product or del service, without more words or additions of terms that allow to distinguish the product with particles that, once added, do not change the descriptive word”

Likewise, to determine the descriptive condition of a denomination, the Andean jurisprudence suggests asking ¿how is the product we have in face? If the answer is the impugned trademark, we will be in front of a descriptive sign. It is important to say that if the trademark does not give a direct idea of the product to be protected, but there is an informative, circumstantial or non- necessary reference, we would be in face of evocative signs, which are perfectly registrable. A clear example of an evocative trademark is NESCAFÉ. Nevertheless, evocative terms can give rise to weak trademarks.

USUAL AND NECESSARY FORMS: In the case of denominative trademarks, the usual forms are equivalent to the generic words. They are those normally used by businesspersons within the pertinent market, do not have originality and, consequently, lack of distinctiveness strength. “Are necessary those than must have that specific form due to the function they have to perform or that is the result of the manufacturing system to which the products are submitted”

THE FORMS THAT IMPLY A TECHNICAL OR FUNCTIONAL ADVANTAGE: The legislator looks for preventing the registration of trademarks that, in strict sense, should be protected with patents of invention or with utility models. The search is for a limit between two juridical figures that are part of the Industrial Property, or avoid that any creation that did not obtain a patent or became of public dominion, later could be indefinitely be appropriated by means of the registration as trademark. It must be prevented that the technical or functional advantage derives mainly from the object over which the protection is sought. According with the doctrine, rightly in my view, “If the functional condition is an accessory or secondary consequence of the form, it would not be an impediment to obtain the trademark protection”

DECEPTIVE SIGNS: Are those reflecting an erroneous idea about the product. The error can come from the nature, origin, way of manufacture, or characteristics of the merchandise, etc. Thus, trademark WHISKY is deceptive to identify VODKA.