For the constitution of a trademark, the Industrial Property Code allows for a great degree of creativity on the part of economic operators – the mark may consist of a sign or set of signs capable of graphic representation (in particular words, including personal names, designs, letters, numerals, sounds, colours, the shape of the product or of the respective packaging).
However, anyone who creates a trademark naturally does so with one purpose: to identify their goods or services and to distinguish them from others.
A trademark must therefore have this essential characteristic, i.e. that of being able to individualise.
For this purpose, it needs to have the necessary distinctive character. Accordingly, the Industrial Property Code defines some absolute limitations to the freedom to constitute a trademark, in order to ensure that this primary function of the trademark as a distinctive sign is fulfilled.
That is to say, registration will be refused by the Portuguese Industrial Property Office if the trademark consists exclusively of elements that are merely generic or descriptive.
This means that the closer the composition of a trademark is to these legal limitations, the weaker its capacity will supposedly be, in the eyes of the law, to distinguish itself on the market.
This is the case, for example, of trademarks consisting of elements which relate to the location of the services rendered or which refer to the origin of the goods in question, for example “WEST”, or trademarks which indicate, however tenuously or even if only partially, the goods or services provided, for example trademarks including the term “NATUR” to designate organic products.
This, from a legal perspective, is the concept of the weak mark. However, will the perspective be the same in terms of marketing and advertising?
The reality is that the signs which normally work as being appealing or catchy for consumers are simple and truly memorable signs, capable of relating with consumers on an emotional and personal level and consequently immediately able to identify the goods or services concerned. Therefore, a trademark that is weak legally may work very well in terms of marketing.
In fact, there are many cases of trademarks that are widely known and appreciated, which from a legal point of view are considered to be weak but which actually work very well on the market.
It can thus be seen that there is a dichotomy between distinctive character and the concept of the strong mark from these two perspectives. The “ideal” trademark should be both unique and capable of distinguishing itself, while at the same time being attractive to consumers.
The reality is that there are not many cases where a trademark in itself may be considered to be strong on both levels.
This means that economic operators must use their creative capacity to try to achieve for their trademarks the best of both worlds.
