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Barreda Moller writes...

Registrability of evocative signs

Pursuant to Article 135, paragraph e) of Decision 486, Common Industrial Property Regime, “Signs may not be registered as trademarks when they consist exclusively of a sign or statement that may serve in commerce to describe the quality, quantity, purpose, value, geographical origin, time of production or other data, characteristics or information, concerning the products or services for which the sign or statement is to be used, including expressions extolling said goods or services.”

The signs which fall within the prohibition stated in the preceding paragraph are the so-called descriptive signs.  This type of sign makes direct reference to the characteristics of the products or services that the sign intends to identify; therefore, it lacks the necessary distinctiveness to be object of registration.

Nevertheless, terms that without describing the characteristics of the products or services that they intend to identify, give an idea of those products or services, can be granted registration; in other words, they evoke an idea about said products or services. These terms are called “evocative.”

“Unlike descriptive trademarks, evocative or suggestive trademarks do not make direct or immediate reference to a characteristic or quality of the product.  In order to understand which products or services the trademark comprises, the consumer must use imagination, that is, a deductive process between the trademark or sign and the product or service.” (Proceedings 20-IP-96, Court of Justice of the Andean Community, Case: Registration of EXPOVIVIENDA trademark.)

It is worth mentioning that the distinctiveness of a trademark is the capacity that it has to individualize in the market the products or services that it identifies, in this way being possible to differentiate between said products or services and those of the competitors and associate the trademark with a certain business origin.

In this line, unlike descriptive terms, evocative terms –which do not make direct and immediate reference to the characteristics of the products or services that they intend to identify- comply with the distinctiveness requirement that any trademark must have, thus being possible to associate said evocative term with a certain business origin.  Therefore, evocative terms can be registered as trademarks.

It is important to mention that it is kind of subjective to determine that a term is descriptive or evocative.  In that sense,  the fact that a term be considered evocative and as such may be granted trademark registration, will depend on each concrete case, as well as on the criterion applied by the Trademark Authority of each country.

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