Beyond The Words: Criteria for Determining the Descriptiveness of a Sign

INTRODUCTION

Distinctiveness is a fundamental concept in the field of intellectual property law. It refers to the ability of a trademark to differentiate a product or service from those of other companies in the market. This quality is essential for establishing a unique identity in the minds of consumers and for protecting the exclusive rights of use of the trademark.

One of the main factors that threaten the distinctiveness of a trademark is the descriptive denominations. According to the jurisprudence of the Andean Tribunal[1], these are denominations that exclusively inform about the characteristics or properties of the product, such as its quality, quantity, functions, ingredients, size, value, destination, etc.

On the other hand, the same Tribunal also establishes that while signs exclusively made up of descriptive denominations may generate completely distinctive signs when combined with others elements, the owner will not be able to prevent other entrepreneurs from using these descriptive denominations. In other words, the owner owner of a trademark that includes descriptive denominations will have limited means of defense to protect it against third parties because such denominations are part of the public domain.

It is precisely this limitation on the exclusive right that underscores the importance of establishing the criteria for determining when a denomination is descriptive or not. Since an incorrect application of these criteria could result in either the registration of denominations that are necessary for the identification and advertising of products and services in the commercial market, thus affecting free competition, or allowing the coexistence of similar trademarks that could confuse consumers.

A recent example of the second issue arose in the case of the "KARISSA BY YG" vs. "CARISSA LURI" trademark dispute, which was analized by the Specialized Intellectual Property Chamber of INDECOPI. This case highlights the complexity involved in determining the descriptive nature of a sign, which goes beyond the concept that the word  evokes.

CASE BACKGROUND

The conflict began when the owner of the trademark "CARISSA LURI" filed an opposition against the trademark application "KARISSA BY YG", both in Class 3 of the Nice International Classification, which includes cosmetics and cleaning products. The opponent argue the existence of phonetic similarity of the signs and the identity and connection between their products.

In response, the applicant argued that their trademark had additional distinctive elements, such as the the term "BY YG," which, combined with the name "KARISSA" and the graphic design of the signs, clearly differentiated it from "CARISSA LURI." They also argued that there was no evidence of actual confusion in the market and that the products covered by both trademarks were not directly related, further minimizing the risk of consumer confusion.

In the first instance, through Resolution No. 5369-2022/CSD-INDECOPI, the Commission of Distinctive Signs of INDECOPI determined that although there was identity and connection between the products, the denomination “CARISSA” constituted a descriptive denomination, as it referred to a fruit, directly informing consumers that it would be an ingredient in the products distinguished by the trademarks. Therefore, it was not considered in the comparative examination. As a result, the Commission found no similarity between the signs since the comparative examination was only conducted between the additional denominative elements, LURI (opposing trademark) and BY YG (applied trademark), which are evidently different. Therefore, the opposition was dismissed, and the  trademark application was granted.

The opponent filed appeal against this decision, primarily arguing that the denomination "CARISSA" was not descriptive, because even though there is a fruit with that name, it was not native of our country, making it practically unknown for the average consumer, and there was no evidence that the mentioned fruit was used as an essential ingredient in productos of class 03.

DECISION OF THE CHAMBER AND CRITERIA FOR DETERMINING THE DESCRIPTIVENESS OF A SIGN

Through Resolution N° 455-2024/TPI-INDECOPI, the Specialized Intellectual Property Chamber of INDECOPI, aligning with our position, established that the denomination "CARISSA" indeed refers to a type of fruit native of Africa but  it was not used for the manufacture of cosmetics or cleaning products of class 03 but rather for making sweets, jams, and jellies. Therefore, for the average consumer, it would be percieved as denomination without meaning, since it does not directly refer to the characteristics of the products distinguished by the conflicting signs. The chamber then proceeded to conduct the comparative examination, this time considering the questioned denominations, which concluded that they were phonetically similar, an undeniable fact, and ultimately upheld the appeal, revoking the first-instance resolution and denying the trademark application.

One of the most important aspects of this decision is that the chamber not only considered the fact that the denomination "CARISSA" refers to a fruit but also its place of origin and its applications in the market, factors that the commission in the first instance chose to ignore.

It is also noteworthy that the chamber took the initiative to conduct a more in-depth investigation into the denomination "CARISSA" since it cited sources explaining the use of this fruit in food products[2] and not in cosmetics and cleaning products of class 03, as the commission wrongly indicated.

CONCLUSIONS

• The distinctiveness of a trademark is fundamental for its protection and success in the market. As seen in the case of the "KARISSA BY YG" vs. "CARISSA LURI" trademark dispute, determining whether a denomination is descriptive or not is a complex process that can have a significant impact on the final decision regarding the registration of the trademark. The analysis conducted by the Specialized Intellectual Property Chamber of INDECOPI demonstrates the importance of considering not only the literal meaning of a word but also its context, geographic origin, and relevance in the market for specific products or services.

• The incorrect classification of a denomination as descriptive can lead to decisions that affect the effective protection of trademarks. At the same time, it is crucial that authorities and trademark owners understand that denominatios that may seem descriptive in a certain context may not be so in another, depending on the average consumer's perception and the common use of the term in the relevant industry.