Trademark Distinctiveness — What You Need to Know (Summarized)

Looking for a clear understanding of what makes a sign legally trademarkable? Here’s a concise summary of the key points — explained in practical terms. Each of these elements is explored further in dedicated articles on this blog, so feel free to explore those for deeper insights tailored to your brand journey.

This overview is designed to help you gain orientation in trademark law, particularly for Polish trademarks, though many of these principles also apply under EU law and potentially in other European jurisdictions. Keep in mind that this article provides general guidance. For tailored legal advice, especially in complex or high-stakes cases, it's always best to consult an IP lawyer, legal advisor, or patent attorney.

I hope this basic information will help you create an excellent brand for your business, which will be registered as a trademark and become a valuable intellectual property asset.

What Makes a Sign Eligible for Trademark Registration?

A sign (brand) has distinctiveness, allowing it to be registered as a trademark when it meets one or more of the following criteria:

1. It is abstract:

a. Has no inherent meaning (e.g., Reebok, BMW, Pepsi), or

b. without a specific meaning concerning the products or services for which it is to be used,

e.g. "Vistula" concerning clothes or "Apple" with computers or other consumer electronics devices,

Note: If a foreign word is used, its meaning in that language may be taken into account — particularly if the average consumer in the relevant market is likely to understand it.

2. It’s Allusive

• The mark hints at qualities of the product, without directly describing them.
  (e.g., “Jaguar” for cars, “Medicine” for clothing)

3. It Goes Beyond Descriptive Language

• It contains more than just product information like:

  • Type (“women’s clothing”)

  • Origin (“made in Poland”)

  • Quality (“first-class”)

  • Quantity (“two-piece set”)

  • Purpose or target (“for her”)

  • Production method (“handwoven”)

  • Ingredients (“100% silk”)

  • Suitability (“mountain gear”)

If your brand includes such descriptors, it must also contain other distinctive elements (e.g., stylized typography or design) to qualify for protection.

Examples of trademarks with descriptive word elements with sufficiently distinctive graphics: “Polish Fashion”; The perfect tailor”; “The plus size fashion”.

4. It Respects the Public Interest

Trademark law aims to balance private brand rights with public and commercial freedoms. Registration will be refused or restricted if:

a. The mark uses protected symbols (e.g., coats of arms, EU symbols, Olympic rings) without authorisation.

b. It contains names of protected plant varieties or closely related species without adequate differentiation.

Search protected plant varieties here: https://www.gov.pl/web/piorin/wykaz-odmian; https://food.ec.europa.eu/plants/plant-reproductive-material/plant-variety-catalogues-databases-information-systems_en)

c. It misleads consumers about geographical origin — especially in the case of protected food and drink (e.g., Champagne, Oscypek, Parmigiano Reggiano).
Search protected geographical indications here »

(geographical indications are protected names of food or alcoholic beverages whose production is associated with a specific place where there are particular conditions that have a decisive impact on the properties of the product, such as humidity, mineral composition and soil quality, sunlight, level and frequency of precipitation in during the year;

registered geographical indications include "Bordeaux", feta cheese, Parmesan cheese (Parmigiano Reggiano), Polish oscypek cheese, vodka, croissants of St. Martin's Day, and grójeckie apples; the data base is here: https://tmdn.org/ giview/;

In the case of alcoholic products, a trademark may include geographical elements only if they accurately reflect the true origin of the product. For marks referencing homonymous localities — that is, place names that sound the same but refer to different locations — registration may still be possible, provided that consumers are unlikely to associate the name with another, more well-known region associated with those products. For products such as wine or beer, protection may be granted; however, the Patent Office may require the applicant to modify the mark to avoid confusion with earlier registered marks.

How Offices Assess Trademark Applications

IP offices evaluate whether registering a trademark aligns with:

• Consumer protection

• Commercial fairness

• Respect for earlier rights

From a customer’s perspective

The mark should: evoke associations at least for an average customer: 

a. truthful - without the risk of misleading the customer as to the properties of the product , such as in particular quality or geographical origin,

b. respecting the client's feelings about national, ethnic, religious and sexual identity, worldview, and health condition;

c. consistent with public order and good customs, so as a rule, the sign will evoke associations other than vulgar or obscene; 

From a market competitor’s perspective

Trademark registration must also respect the rights of other businesses operating in the same or related industries. In particular:

a. no conflict with earlier identical or similar trademarks

• The trademark should not be identical to, or confusingly similar to, a previously registered mark covering the same or similar goods or services.

• If a similar trademark already exists, the new application may still succeed — but only if its use would not mislead consumers.

You can check for existing trademarks using the TMview database. Use the "fuzzy search" function or the image upload option (JPG, PNG, GIF, or TIFF format) to find visually or phonetically similar marks by clicking the camera icon in the search bar.

b. no undue similarity to well-known (reputable) trademarks
If a previously registered mark is widely recognized (e.g., Nike, Adidas), the new trademark application must not:

• Be similar enough to create an unfair association that benefits the new applicant;

• Weaken the distinctiveness of the earlier mark; or

• Damage the reputation of the original brand.

In cases where similarity to a reputable mark is even a remote possibility, it’s highly advisable to seek legal advice before proceeding with registration.

The mark above was found to be similar to the renowned Puma mark, and its registration was refused.

c. Respect for fair commercial practices and the public domain

Trademark protection must not prevent other businesses from using descriptive terms to fairly promote and describe their own, similar products or services. In line with established and honest business practices, descriptive elements within a trademark — such as product type, features, or intended use — remain in the public domain.

This means that even if a trademark includes descriptive wording, other entrepreneurs may still use those same descriptive terms in their own marketing, advertising, or packaging without infringing trademark rights.

To be registrable and enforceable, a trademark must therefore contain elements beyond standard descriptions — something more original and distinctive than simply stating what the product is, where it’s from, or how it works. Descriptive language alone cannot be monopolized through trademark protection, as it must remain accessible to all participants in the market.

Use tools like TMview to search for similar registered trademarks and avoid potential conflicts. Don’t forget to use fuzzy search or image upload for graphic marks.

Consider Third-Party Rights

When applying for trademark protection, it’s essential to consider not only market interests but also the individual rights of third parties whose contributions, identity, or prior use may intersect with the proposed mark. Proper legal due diligence at this stage can prevent costly disputes — and that’s where specialized IP support becomes invaluable.

a. Copyrights in original graphic designs

If your trademark includes a highly creative visual element, it may qualify as a “work” under copyright law — meaning it is the result of an individual’s creative expression. In such cases, it’s crucial to ensure that copyright ownership is clearly transferred to your business through a written agreement. This often involves the original designer, their employer, or an external agency.

Why it matters: A trademark based on an unlicensed copyrighted work can be challenged — or even invalidated.

b. Use of protected characters or artistic works

If the trademark design incorporates fictional characters (e.g. from comics, films, games, or illustrations) or other elements protected by copyright, it’s essential to obtain written permission from the rights holder before using or registering the mark.

Real-world risk: Many businesses unknowingly infringe by using pop culture references or illustrations — a legal review helps avoid potential claims or takedown requests.

c. Use of personal rights: names, likenesses, and identities

Trademarks that use someone’s name, face, or image require the individual’s consent — regardless of whether they are public figures or private individuals.
For example, the KFC brand uses the likeness of its founder, Harland David Sanders, while brands like Versace or Armani leverage the personal names of their designers.

Including the business owner’s name in the trademark can strengthen control over the brand — especially when seeking investors or licensing partners — as long as proper rights are secured.

d. Bad faith filings and domain name abuse

IP offices may reject a trademark if it appears to have been filed in bad faith — for example, to exploit someone else’s prior use or reputation.

A typical scenario:

• Someone uses a domain name or brand informally without registering a trademark.

• They accidentally let the domain registration lapse.

• Another party files for a trademark using that name — not to build a brand, but to take over its traffic, goodwill, or demand ransom to hand it back ("trademark trolling").

  How to stay protected: A timely trademark application can secure your rights before competitors — or trolls — try to capitalize on your brand.

Bottom line:
Each of these scenarios highlights the importance of strategic legal guidance when creating or registering a trademark. Partnering with an IP expert helps protect not only your brand’s originality — but also ensures it respects the rights of others, making your registration both defensible and enforceable from day one.

Legal Use of the ® Symbol

You can only start using the ® symbol once the trademark is officially registered. Using it before that point is not allowed and could lead to penalties.

Final Thoughts

Trademark protection isn’t just about checking a legal box — it’s a smart business strategy. It secures your brand identity, prevents legal disputes, and adds long-term value to your company’s IP portfolio.

With a solid understanding of how distinctiveness works, you’re in a strong position to:

• Design a brand that stands out,

• Protect it effectively,

• And grow your business with confidence.

If you're unsure about your next steps or want tailored legal assistance in trademark registration, feel free to reach out. A strong brand starts with smart protection.