A trademark must be distinctive, one of the pitfalls of trademark law. A trick you can use in order to register a descriptive mark is to add a distinctive word or logo. Still, the scope of protection of the words will be limited, in case of a logo, this protection will normally concern the combination of the word and device elements only. But sometimes, that is just enough.Like in the opposition in the EU of Grand’Italia against Italia (mark below).
The OHIM rightly states that Italy is well-known for its food and drink, so Italy is a clear indication of origin. Moreover, the word grand does not add much value either. At least, to the consumer who understands the meaning. For the other consumers who do not grasp the meaning, these words are distinctive. Just as testcase: if a reader knows some European who does not know that Italia is Italy, please let us know, this would be special.
The OHIM weights all arguments and despite the descriptive nature of the words, it finds the two trademark a bit to similar. As it seems a close call, the defendant could try its luck in an appeal.
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“Trademark protection gives freedom to do business.”