The essential function of a trade mark is to guarantee the identity of origin of the goods or services to the consumer, to allow the consumer to distinguish the goods or services of one undertaking from those of other undertakings.
In the UK and EU, signs that are customary in the trade are signs that all traders should be free to use.
The reason for the exclusion regarding customary trademarks in the UK and EU, is that such signs are ‘incapable of distinguishing’ the goods or services of one undertaking from those of another.
In the case Merz & Krell GmbH the “Bravo” case, a German company applied to register BRAVO as a trade mark for typewriters, the German Patent and Trade Mark office rejected the application as BRAVO was a term of praise, meaning ’well done’ in many European languages, or as an advertising slogan.
However, the Court of Justice’s opinion, stated that in principle there would not be a bar to the trade mark ‘Bravo’, for typewriters. However, it would not be possible to register the mark for sports clothing or services, as the exclamation “Bravo” is widely used, customary in the trade.
Therefore, as stated in the Bravo case, trademarks which may be refused registration due to being customary in the trade are “excluded from registration not on the basis that they are descriptive, but on the basis of current usage in trade sectors covering trade in the goods or services for which the marks are sought to be registered”.
In Alcon v OHIM, the “BSS” case, Alcon registered the EU trade mark BSS in class 5 for “ophthalmic pharmaceutical preparations; sterile solutions for ophthalmic surgery. The trade mark BSS was invalidated under Article 7(1)(d), since it was established that, in specialist circles (scientific community), the term BSS had become customary as a generic indication for a Balanced Salt Solution, therefore, the mark was invalid.
Therefore, whether a mark is customary is assessed as follows:
- By reference to the goods or service for which registration is being sought,
- On the basis of the target public perception of the mark.