Definition and Meaning of Descriptive Features
Descriptive features are of central importance in law, particularly in intellectual property law. They describe characteristics that objectively identify goods or services without individualizing them or indicating a specific commercial origin. In a legal context, the term primarily relates to the distinctiveness, protectability, and distinguishing power of trademarks, but they are also relevant in other areas.
Descriptive features include terms, signs, or properties that are used solely in a descriptive, factual, or neutral manner with respect to goods or services. They are generally to be differentiated from purely fanciful or origin-indicating features.
Legal Foundations regarding Descriptive Features
Trademark Law and the Trade Mark Act (MarkenG)
At the core of the legal discussion is the German Trademark Act (MarkenG) as well as Regulation (EU) 2017/1001 on the European Union Trade Mark (EUTMR). Both enact the requirements set out in Directive (EU) 2015/2436.
According to Section 8(2) MarkenG, trademarks are generally not eligible for protection if they consist exclusively of signs or indications that may serve in trade to designate the type, quality, quantity, intended purpose, value, geographical origin, or other characteristics of goods or services. This concerns so-called descriptive features.
Art. 7 EUTMR
Accordingly, Art. 7(1)(c) EUTMR applies to EU trademarks. Both provisions prevent the monopolization of descriptive terms to the benefit of individual economic operators in the interest of a free competitive structure.
Areas of Application and Examples
Exclusion from Registration
Word marks or word/device marks that consist solely of descriptive indications are excluded from registration under the aforementioned provisions. Examples: “Apple” for fruit, “Organic Milk” for dairy products, or “Quick-Clean” for cleaning agents. These terms serve to directly describe the good or service, not its business origin.
Acquired Distinctiveness
An exception is acquired distinctiveness pursuant to Section 8(3) MarkenG and Art. 7(3) EUTMR. If a term that was originally descriptive has become established within the relevant public as an indication of a specific undertaking, protection can be granted despite its descriptiveness. The burden of proof for acquired distinctiveness lies with the applicant.
Descriptive Features in Competition Law
Descriptive features generally do not enjoy protection under competition law (§ 4 No. 3 UWG), as they may be freely used and possess no inherent distinctiveness. This means that purely descriptive terms cannot be asserted as having competitive individuality. This helps keep the market open for providers of different goods and services.
Descriptive Features in Patent Law and Design Law
Patent Law
In patent law, the term is less central; however, patent claims are worded such that the technical features of an invention are clearly and comprehensibly defined. A distinction must be made between technical (functional) and descriptive (descriptive) statements. Descriptive features alone are not patentable, as they do not establish an inventive step.
Design Law (Design Patent Law)
Descriptive features are also taken into account in design law: According to Section 3 DesignG, a design is not eligible for protection if it is determined solely by its technical function or dictated by the way it is used. This includes descriptive representations that only objectively describe a product or function.
Case Law on Descriptive Features
The case law, particularly that of the Federal Court of Justice (BGH) and the European Court of Justice (ECJ), has for years specified the requirements for descriptive features. The decisive criterion is the perspective of the relevant public at the time of application.
Key Judgments
- BGH, Decision of 8 August 2013 – I ZB 39/12 “saby”: Only if a term is understood by the relevant public exclusively as a purely descriptive indication and not (also) as an indication of origin, is it excluded from registration.
- ECJ, Judgment of 12 February 2004 – C‑363/99, “Postkantoor”: Registration is refused if at least one possible meaning of a sign is a descriptive term.
The courts consistently emphasize that protection is refused as soon as a term is descriptive in any of its possible meanings.
Protectability and Acquired Distinctiveness in Detail
Distinctiveness
Distinctiveness is a key criterion: Only terms, signs, or symbols that are capable of distinguishing the goods or services of one company from those of others are eligible for protection. Descriptive features generally do not meet this requirement, as they appear purely descriptive.
Acquired Distinctiveness
However, according to Section 8(3) MarkenG and Art. 7(3) EUTMR, it is possible to transform an originally descriptive term into a trademark as soon as “acquired distinctiveness” exists. This requires that a significant part of the relevant public perceives the sign as an indication of a particular company.
Significance and Function for Competition
Descriptive features are an essential instrument of information freedom in commercial transactions. They ensure that basic, objective terms are available for the free use of all providers. This is a decisive contribution to effective competition and prevents the monopolization of everyday language terms.
Distinction from Other Terms
Suggestive and Fanciful Terms
- Suggestive Terms hint at product characteristics by association without describing them directly (e.g., “Sparkling Clean” for cleaning products). They can be eligible for protection.
- Fanciful Terms (“Kodak” for photographic film) are not descriptive and are fully eligible for protection.
Summary
Descriptive features play a key role in the context of trademark, competition, patent, and design law. They are objectively descriptive terms that are generally not individually eligible for protection by law. The aim of their legal classification is to prevent the monopolization of general descriptive terms so as to safeguard free competition. However, under special circumstances such as acquired distinctiveness, trademark protection may exceptionally be granted under trademark law.
Sources and Further Reading
- Trademark Act (MarkenG)
- Regulation (EU) 2017/1001 on the European Union Trade Mark (EUTMR)
- Directive (EU) 2015/2436
- Federal Court of Justice (BGH)
- European Court of Justice (ECJ)
- Act Against Unfair Competition (UWG)
- Design Act (DesignG)
Frequently Asked Questions
What is the importance of descriptive features with respect to trademark protection?
Descriptive features are of central importance in trademark law, as they often serve as grounds for refusing the registration of a trademark. According to Section 8 MarkenG, signs are excluded from registration if they consist exclusively of indications that may serve in trade to designate the type, quality, quantity, intended purpose, value, geographical origin, or other characteristics of the goods or services. This means that word marks containing only descriptive (descriptive) information about the product cannot be protected as a trademark because such terms must remain available for general commerce. A typical example is the term “apple juice” for fruit juices, as it merely describes the product in the course of trade and therefore cannot be ascribed to a specific origin. The assessment of descriptiveness is always made with respect to the specific goods or services claimed, and any possible translatability or metaphorical meaning can also be considered. Courts and trademark offices therefore examine in each individual case whether the applied-for sign actually has an exclusively descriptive character or, through imagination, ambiguity, or an original combination, is distinctive.
How are descriptive features dealt with in competition law?
In competition law, the use of descriptive features is generally permissible, as they serve to describe goods, services, or business activities and do not indicate origin. The Act Against Unfair Competition (UWG) does protect competitors from misleading advertising, but does not generally protect the use of descriptive terms if they are used truthfully and not misleadingly. Conflicts mainly arise when businesses try to claim exclusively for themselves purely descriptive terms and thus restrict competitors in their commercial freedom of action. Unjustified attempts to establish a monopoly on such terms are generally rejected by the courts. However, it must be ensured when using descriptive terms that there is no deception or misleading of consumers, for example if a descriptive term gives a false impression of value or origin.
What role do descriptive features play in patent law?
In patent law, descriptive features also refer to the purely factual description of the technical features of an invention. They define the scope of protection of a patent by stating clearly and unambiguously which technical features are being claimed. A patent can only be granted for new and inventive technical teachings, whereby the application must contain a sufficiently clear and complete description (§ 34 PatG). The information provided must not be misleading or vague. Descriptive features here are not grounds for exclusion but rather necessary components of the technical description, so that the subject matter of the patent can be clearly defined. In contrast to trademark law, the issue is not whether a specific term is eligible for protection, but whether the technical teaching itself is patentable.
To what extent are descriptive features freely usable in competition law?
The so-called ‘need to keep free’ principle means that descriptive features may, in principle, be used by anyone and are not capable of individualization. Companies cannot claim an exclusive right to common factual descriptions. The same applies to domain allocation or the design of advertising messages—there is no possibility of monopolizing descriptive terms. However, in individual cases, acquired distinctiveness can give an originally descriptive term distinctiveness, provided it can be proven that for the majority of the relevant public the term is associated with a specific company or product. This requires comprehensive evidence, such as market research or sales and advertising expenditures.
How are descriptive features dealt with in the law regarding indications of geographical origin?
Geographical indications of origin are a typical example of descriptive features subject to statutory protection regulations. Product labels that refer to a specific place or region (e.g., Black Forest ham, Champagne) may generally only be used by producers whose products actually originate from the stated region and who follow the applicable rules of production there. To protect consumers from deception, false or misleading use of indications of geographical origin is prohibited under Sections 126 ff. MarkenG and can be sanctioned by injunctions or claims for damages. In relation to trademark law, geographical indications of origin are also excluded from monopolization by registration as a trademark as long as they are used descriptively and not with sufficient distinctiveness for a specific company.
Can descriptive features acquire trademark protection through acquired distinctiveness?
Yes, a feature that was originally purely descriptive may acquire trademark protection through so-called acquired distinctiveness under Section 8(3) MarkenG. The prerequisite is that the sign, as a result of its use for the relevant goods or services, is recognized by the relevant public as an indication of commercial origin. The requirements for acquired distinctiveness are strict, and are regularly substantiated by representative surveys, sales data, and advertising expenses. The relevant threshold, depending on the product area, is between 50 and 75 percent awareness within the relevant public. If this threshold is met, registration as a trademark can occur despite initial descriptiveness. A prominent example is the term “Post” as a trademark for Deutsche Post AG, which was originally descriptive but acquired distinctiveness through long-term and intensive use.
