TRADEMARK IRREGISTRABILITY

Oscar David Reyesbr>

USUAL AND NECESSARY DESIGNATIONS: The usual designations are those that in popular language or the business usage of a country, have acquired a meaning commonly known, independently of their publication in traditional dictionaries.
An example of usual words, although it may not be understood in its correct meaning, is BIELA to identify beers, because in the national usage it constitute synonymous (possibly in other Spanish speaking countries it could not be that way.)

The necessary designations are those that unfailingly will be used to identify a product, service, or any of their qualities. Thus, nobody could monopolize the particle DERM, as businesspersons selling dermatological products will necessarily use it. Therefore, to furnish exclusiveness over this particle, would consecrate an unfair competition act against all concurrent in the market of products of epithelial application, as they would be impeded alluding to that particle.

PARTICLES OF COMMON USE: The common use implies that certain particles are present in several or many trademarks registered by different titleholders, in the same international class. Consequently, no one of the titleholders of this type of denominations can prevent that other titleholder uses them, as they are terms of free use. For a trademark containing particles of common use can be registered, this should include additional elements to justify its distinctiveness strength; otherwise, we would be in face of a weak term, non-appropriable, nor subject to be claimed under exclusivity. An example of a term of common use is the particle OSTEO that is part of innumerous trademarks registered by different titleholders, in international class No. 5.

Remaining prohibitions are regarded to the defense of the public order, diverse destiny, injuries to the rights of third parties; and to avoid deceit to consumers, when using for example shields or abbreviations of countries or worldwide known institutions.

“This prohibition of deceptive signs not only responds to the intention of the legislator to avoid deceit of buyers through trademarks, but also and very specially to avoid illegal or unfair competition acts, or even, to avoid the protection of signs which, by themselves, would be an instrument of illegal compeition”6

In short, for a trademark to be registered, it is not only necessary to differentiate from priory-registered signs, but that fulfills the intrinsic conditions in defense of the public order and of the fair competition.