How To Protect Weak Trademarks From The Legal Point Of View

The recent rejection by Brazilian PTO (INPI) of the well-known SELARIA brand of the famous luxury store chain, Richards, which belongs to Inbrands, reawakened debates on an old topic: what defines the strength of a trademark? In a bid to resolve this issue, we must bear in mind the idea that, according to legal doctrine, trademarks are categorized in line with their degree of distinctiveness and, in turn, their enforceability against third parties, and are classified as fanciful, arbitrary, suggestive or evocative, descriptive and generic.

Trademarks are regarded as strong when they have no relation to the product or service on offer on the consumer market. Examples of these kinds of trademarks are the fanciful ones which have no meaning and have been coined, such as HAAGENDAZS, and arbitrary ones which, despite having a meaning in semantic terms, have no link with the products the company has on offer, as is the case with APPLE.

Trademarks regarded as weak inspire an association with the products or services on offer, directly or indirectly, and are classified as follows: suggestive, descriptive and generic, depending on the kind of association. Descriptive and generic trademarks convey the product or service sold under their directly to the consumer name and, as they are regarded as weak trademarks, registration is forbidden by law. One example would be the use of the word TEA to designate a brand of "teas". This would be regarded as generic and could not be registered while the trademark FASTAPP for a brand of "apps for telephones" would be regarded as descriptive and could possibly not be registered.

As for suggestive or evocative trademarks, although they may be regarded as strong by Marketing professionals, they could be considered weak from the legal point of view. This is because these trademarks require a thoughtful effort by the consumer to associate them with the product/service on offer. (For example, this occurs with the IBIZA CLUB brand used for "nightclubs", referring to the Spanish island which is world famous for its parties.) However, their very presence on the market could lead to a misinterpretation by the public as a whole, as if they were generic or descriptive.

This inherent risk within weak trademarks becomes greater when the regulators of the Trademark Law (Judges or examiners from the National Patent and Trademark Office) are influenced by this kind of false premise. However, this does not rule out this kind of...