Registrability of descriptive terms

In accordance with paragraph e) of Article 135 of Decision 486, Industrial Property Common Regime, “Signs may not be registered as trademarks when they: (…) e) consist exclusively of a sign or statement that may serve in commerce to designate or describe, in respect of the goods or services for which they are to be used, their quality, quantity, purpose, value, geographical origin, or time of production, or that impart other details, characteristics, or information, including laudatory expressions for those goods or services; (…)”.

For example, the term propolis -substance made by bees, which is considered a natural remedy against many ailments and pathologies- would be considered descriptive in relation to preparations for medical purposes, since it informs about that characteristics of said preparations, namely, that they contain propolis or are made of this substance.

The Andean Community Court of Justice, in Proceedings 343-IP-2019, established the following: “Signs exclusively made up of descriptive denominations, when combined with others, can generate completely different sings.  The owner of a trademark cannot prevent that descriptive expressions be used by other entrepreneurs.  This means that its trademark is weak because it has a limited opposition capability, since the descriptive particles must be excluded from the trademark comparison.”

As it is appreciated, a descriptive term can be part of a sign which includes additional distinctive elements that provide it with distinctiveness; nevertheless, in this case, the protection will be on the trademark as a whole and not on the descriptive element considered isolatedly. In that sense, the owner of the trademark will not be able to prevent others from using and/or registering trademarks containing said descriptive term.

It is worth mentioning that not all descriptive denominations are unregistrable, since it will depend on the nature and characteristics of the involved products or services. Thus, a term can be descriptive for a certain product or service, but not for other goods or services.

Moreover, the acknowledgement of a foreign language denomination as descriptive or not, will depend on the level of knowledge of its meaning or on the need of its use in the market by competitors.  For example, delivery, which has become part of the common language of the country, would be considered a descriptive denomination for delivery services of food or other products.