Suggestive trademarks

Suggestive trademarks, also called evocative trademarks, are signs that indirectly suggest or evoke some idea about the characteristics or properties of the products or services that they are intended to distinguish, without actually describing them. Here, for example, we can mention the trademark “Nescafé” to distinguish the coffee product, the trademark “Lavadocil” to distinguish dishwashers or the trademark “Cerelac” to distinguish cereals. And this is also the case of many pharmaceutical trademarks such as the trademarks “Dolomax”, “Cardioplus” or “Alercet”, among others.

Both in doctrine and in jurisprudence it is pointed out that the evocative trademark is one that brings to the memory or mind of the consumer some idea of the characteristics of the product or service that is intended to be distinguished with it, which makes this type of trademarks considered weak trademarks.

According to Jorge Otamendi[1], “evocative trademarks are considered by the courts to be weak trademarks”, this statement is based on the fact that “any person has the right to evoke in their trademarks the properties or characteristics of the products or services that they are going to distinguish with them.” This makes these types of trademarks weak, since the owner of an evocative trademark has to accept the coexistence of other trademarks that evoke the same concepts.

The Court of Justice of the Andean Community has repeatedly pointed out that “evocative or suggestive trademarks do not have a direct and immediate relationship to a characteristic or quality of the product, as occurs in descriptive trademarks. The consumer, in order to understand what products or services the trademark covers, must use his imagination, that is, a deductive process between the trademark or sign and the product or service. Thus, the evocative sign, unlike the generic or descriptive sign, fulfills the distinctive function of the trademark and, therefore, is registrable.”[2]

Likewise, the Andean Court has stated that:

“(…), the closer the evocative sign is to the product or service that is intended to be registered, the more it may be considered a markedly weak sign and, consequently, its owner would have to support the registration of signs that to some degree resemble its distinctive sign. This occurs in the case of evocative signs that contain generic, descriptive or commonly used elements. Although these elements give the sign evocative capacity, they also make it especially weak, since its owner cannot prevent third parties from using said elements.

A different thing occurs when the evocative sign is of fantasy and there is no strong proximity to the product or service that is intended to be distinguished. In this event, the consumer will have to make a non-evident deduction and, therefore, the distinctive capacity of the sign is markedly strong.”[3]

Unlike evocative signs, descriptive signs are those that, as their name indicates, directly describe the characteristics, properties, ingredients, qualities, etc. of the products or services that the trademark seeks to distinguish. 

Thus, Article 135, paragraph e) of Decision 486 states that signs that cannot be registered as trademarks are those that: 

“e) consist exclusively of a sign or indication that can be used in trade to describe the quality, quantity, destination, value, geographical origin, time of production or other data, characteristics or information of the products or services for which said sign or indication is to be used, including laudatory expressions referring to those products or services; (…)” (Andean Community Commission, 2000). 

In this sense, a descriptive sign would be the name “Salados” to distinguish a type of salty snacks such as potato chips. In this case, the sign lacks distinctive capacity because it describes the products that are intended to be distinguished with the requested sign. 

A case in which it was determined when a sign is descriptive and when it is evocative is that of the trademark ULTRAFLEX filed by ARTECOLA PERU S.A. to distinguish “chemical products intended for industry, adhesives (glues) for industry” of class 01. This application was opposed by the company INTRADEVCO INDUSTRIAL S.A. claiming that she was the owner of the trademark REFLEX in class 03 and ULTRASAL in class 30, that the requested sign was a descriptive sign that lacked distinctiveness, that it was made up of the commonly used terms ULTRA and FLEX, that ULTRA referred to “an extreme degree” and FLEX made direct reference to “flexible”, that ULTRAFLEX referred to “extreme flexibility” directly describing the qualities of the products that were intended to be distinguished. 

The Commission on Distinctive Signs, through Resolution No. 1926-2016/CSD-INDECOPI[4] declared the opposition founded and denied the registration of the sign. When analyzing the requested sign, the Commission indicated that the term ULTRA expressed “excess” and the term FLEX evoked the idea of “flexible.” In addition, it indicated that the name ULTRAFLEX would be perceived as a laudatory name to distinguish adhesives (glues) for industry, of class 01, giving the idea that said product is more elastic and/or flexible than others of the same nature, so it was not possible for an exclusive right to fall on this name. Thus, it was determined that the requested sign was subject to the prohibition of registration of article 135, paragraph e) of Decision 486.

ARTECOLA PERU S.A. filed an appeal and the Specialized Chamber for Intellectual Property, by Resolution No. 740-2017/TPI-INDECOPI[5] revoked Resolution No. 1926-2016/CSD-INDECOPI, determining that the sign was not descriptive but evocative, therefore, weak for products in class 01, and returned the proceedings to the first instance to issue a new decision and evaluate whether the requested sign violated prior rights of third parties. 

By Resolution No. 1417-2017/CSD-INDECOPI[6], the Distinctive Signs Commission declared the opposition filed by INTRADEVCO INDUSTRIAL S.A. unfounded and decided to register the trademark ULTRAFLEX in class 01, stating that the sign was distinctive and susceptible to graphic representation; however, it was noted that this sign, being made up of the particles ULTRA and FLEX that were present in several registered trademarks in class 01, constituted a weak sign, so its owner could not oppose the use or registration of other trademarks containing these terms, provided that there were other elements that gave them distinctiveness and differentiated them from other signs protected by third parties.

In conclusion, evocative trademarks may be registrable, as long as they do not cross the line between evocative and descriptive, which is difficult to define, and are considered descriptive, which would undoubtedly result in their non-registrability due to incurring in a cause for absolute prohibition as they are descriptive signs. 

On the other hand, it must be kept in mind that, when comparing evocative signs with other signs, the generic or descriptive term or particle such as “coffee”, “cardio”, “ultra”, etc., is not taken into account, but rather the rest of the elements that accompany the sign, such as an additional denominative or figurative element, which give it distinctiveness. 

Autor: Marietta Flores

[1] Otamendi, J. (2003). Derecho de Marcas. Buenos Aires: LexisNexis – Abeledo-Perrot 

[2] Proceso 70-IP-2013 (Tribunal de Justicia de la Comunidad Andina 08 de Mayo de 2013). 

[3] Proceso 178-IP-2011 (Tribunal de Justicia de la Comunidad Andina 2011).

[4] Resolución No. 1926-2016/CSD-INDECOPI recaída en el expediente No. 647131-2016

[5] Resolución No. 740-2017/TPI-INDECOPI recaída en el expediente No. 647131-2016

[6] Resolución No. 1417-2017/CSD-INDECOPI recaída en el expediente No. 647131-2016