When selecting a trademark, it may be tempting to include terms that describe the goods or services you intend to offer. Your marketing and sales teams will rightly argue that a descriptive name is catchier, sticks more easily in people’s minds, and makes promotional efforts more effective. As a result, there’s a strong urge to go for a name that directly describes the goods or services or includes one of their key attributes.

However, from a legal perspective, this strategy is far from ideal. Descriptive elements can significantly weaken the validity of your trademark and limit the scope of protection it provides. In some cases, the trademark may even be refused registration altogether.

This article explains how including descriptive elements in your trademark can affect its registrability and scope of protection, illustrated by recent case examples.

Purely descriptive signs: risk of invalidity

One of the fundamental requirements for a valid trademark is distinctiveness—the ability of the sign to distinguish your goods or services from those of other businesses.

A trademark that consists exclusively of descriptive elements lacks this distinctiveness. In other words, it cannot exclusively provide information about, inter alia, the quantity, quality, characteristics, geographic origin, value, time, purpose, kind and/or size of the relevant goods or services.

If the sign has a sufficiently direct and specific relationship with the goods or services, such that the relevant public immediately perceives it as a description rather than an indicator of origin, it will be deemed descriptive and, consequently, ineligible for trademark protection.

The rationale behind this requirement is to prevent the monopolization of terms that competitors may also need to use in the ordinary course of trade.

For illustration purposes, recently, the General Court of the EU (“GCEU”) refused/cancelled the following trademarks for reasons of descriptive character:

	eBilet means, in Polish, electronic ticket. As such, it could designate, for the relevant public, the kind and intended purpose of the relevant goods and services (tickets and a variety of tickets-related services)[1]
	The word element is descriptive of the geographical origin of the goods (namely, a variety of alcoholic beverages, except beer). Further, the typeface is rather standard and the figurative elements will be perceived as mere decorative elements with at most a very minor level of distinctive character, if any.[2]
	Firstly, the word combination “transport werk” will be understood by the German-speaking public as a reference to “a (operating) site where, or from which, transport services are provided”. Secondly, these terms are descriptive for the relevant services, which consist of transport, warehousing and logistics services. Thirdly,  the figurative elements do not change the meaning of the sign in relation to the services.[3]
FRAUD FIGHTERS	The sign merely describes the possible kind and intended purposes of the relevant goods and services (software and IT-related services), as well as their intended users. [4]
CANNAFAIR	The sign will be immediately and easily understandable as a ‘cannabis fair’ and will be perceived by the English-speaking part of the relevant public as an indication of the nature, purpose and quality of the services in question (services relating to the organisation and staging of exhibitions and fairs) [5]
MEDISET	The sign will be perceived by the relevant English-speaking public as an indication of certain characteristics of the products in question (medical products), namely that they belong to a medical set or kit. [6]

Takeaway: To enhance the chances of a successful registration, we strongly recommend choosing a trademark that does not describe the relevant goods or services. Alternatively, consider adding distinctive elements—either verbal or figurative—to strengthen the sign.

Descriptive elements and the risk of confusion – limited scope of protection

Descriptive elements can also significantly reduce the scope of protection of a registered trademark.

When evaluating the likelihood of confusion between two trademarks, the overall impression of each of the signs is taken into account, taking into account, their distinctive and dominant components.

Although descriptive components are not entirely disregarded, they carry less weight in the comparison. If two marks share a common descriptive or weakly distinctive element, this overlap alone is unlikely to give rise to confusion—unless the remaining elements are also weak or the marks are otherwise nearly identical.

For illustration purposes, the GCEU concluded that there was no likelihood of confusion between the following signs, which shared a descriptive element: 

vs. VDL E-POWER	The element e power is, at more, weakly distinctive for the goods at issue (vehicles, vehicle accessories or vehicle parts). The element of difference (VDL), placed at the beginning of the contested sign and which has a distinctive character, therefore outweighs the similarity between the signs – no risk of confusion.[7]
vs.	Having regard to the weak distinctive character of the common elements ‘yoga alliance’, the presence of figurative elements which are visually very different will enable the average consumer to make a clear distinction between the marks at issue, even for the part of the relevant public with an average level of attention, despite the identical or similar character of the services at issue – no risk of confusion[8]
vs.	The relevant public will perceive the expressions ‘bar paris’ and ‘paris bar’ as descriptive of all the goods and services in question (restaurant-related services and food and beverage products). The similarities between the conflicting signs are based exclusively on their very weakly distinctive verbal elements, such that the clear visual differences between the conflicting signs are of greater importance in the global assessment of the likelihood of confusion – no risk of confusion. [9]
vs.	The earlier mark has, at most, only a weak distinctive character, because the two word elements ‘fly’ and ‘dubai’ are descriptive. the fact that the two marks are composed of the word element ‘fly’ to which words referring to an ancient or existing geographical area are attached without a space in between, cannot offset the differences between those marks – no risk of confusion.[10]

Takeaway: Keep in mind that incorporating descriptive elements into your trademark not only risks refusal of registration but can also narrow its enforceability. Choosing a more distinctive sign will provide stronger and broader legal protection.

To some extend however, a descriptive trademark can eventually acquire distinctiveness through extensive use—what’s known in legal terms as “acquired distinctiveness”. But this is no small feat. Trademark offices, such as the EUIPO or BOIP, set a high bar for proving that the public has come to associate a descriptive term exclusively with your brand. This typically requires substantial and consistent use over time, supported by evidence such as sales figures, advertising investments, market surveys, and consumer recognition studies.

Until such distinctiveness is officially recognized, your trademark remains vulnerable: you won’t be able to stop competitors from using the same or similar descriptive terms in their own communications.

Should you require support in securing your trademark or in developing strategies to strengthen its distinctiveness, our IP department remains at your disposal.

Auriane Schockaert

Lawyer

auriane.schockaert@moov.law

[1] GCEU, 26 February 2025, eBilet Polska sp.z.o.o. / EUIPO, T-197/24 (link).

[2] GCEU, 5 March 2025, Victor Waskito Purwana / EUIPO, T-73/24 (link).

[3] GCEU, 19 March 2025, Transport Werk GmbH / EUIPO, T-234/24 (link).

[4] GCEU, 26 March 2025, Seon Technologies Kft./ EUIPO, T-314/24 (link).

[5] GCEU, 26 March 2025, Cannafair GmbH / EUIPO, T-348/24 (link).

[6] GCEU, 2 April 2025, Paul Hartmann AG / EUIPO, T-429/24 (link).

[7] GCUE, 10 November 2021, Nissan Motor Co. Ltd. / EUIPO & VDL Groep BV, T-755/20 (link)

[8] GCEU, 18 January 2023, YAplus DBA Yoga Alliance / EUIPO & Swami Vidyanand, T-443/21 (link)

[9] GCEU, 13 March 2024, Kantstraße Paris Bar GmbH / EUIPO & Superstudio 21 GmbH, T-117/23 (link)

[10] GCEU, 22 January 2025, Fly Persia IKE / EUIPO & Dubai Aviation, T-30/23 (link)